01/02/2021
The UK has now left the EU, following a transition period that ended on 31 December 2020. In contrast to the position in a number of industries, the position in relation to IP rights has been relatively smooth. The UK Intellectual Property Office (UKIPO) has created and entered into its database the comparable rights based on EU trade mark and design registrations which were all in place as of Exit Day. The Office is continuing to work on comparable rights created from EU designations filed via the Madrid or Hague systems and appears to be making good progress. The UKIPO should be commended for this, particularly in view of the current working conditions.
In addition to the on boarding of comparable rights, the UKIPO has published its guidance on UK trade mark proceedings filed on or after Exit Day (Tribunal Practice Notice (2/2020): End of Transition Period – impact on tribunal proceedings).
For UKIPO trade mark proceedings that commence on or after 1 January 2021:
Registered European Union Trade Marks (EUTMs) and granted International Registrations designating the EU (IRs (EU)) will no longer be protected in the UK. Instead, they will be protected as domestic comparable UK trade marks which will automatically come into existence on 1 January 2021 and which will mirror the particulars of the relevant EUTM/IR (EU) such as, for example, filing/priority date, proprietor, goods/services. From 1 January 2021, rights holders can rely on these new comparable UK rights in enforcement proceeding such as UK trade mark opposition proceedings or UK trade mark cancellation actions.
Owners of EUTMs and IRs (EU) which are pending on 31 December 2020 can retain trade mark protection in the UK, including the priority/filing date of their pending EUTM/IR (EU), by re-filing the EUTM/IR (EU) in the UK in the period from 1 January 2021 until 30 September 2021. These marks have to be re-filed before they can serve as earlier rights in UK trade mark proceedings which are filed on or after 1 January 2021. Under certain circumstances it may be possible to add comparable UK trade mark applications as additional earlier rights to pending UK trade mark proceedings.
From 1 January 2021, new address for service rules at the UKIPO come into effect. For all new UK trade mark proceedings, filed on or after 1 January 2021, a UK address for service is needed unless the challenge is based on a registered comparable UK right created from an EUTM registration (N.B. owners of comparable UK rights created from EU designations of international trade marks will need to appoint a UK address for service from the outset). Please see here for our full update about the new address for service rules.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
