Brexit means that the EUIPO trade mark or design registration no longer covers the UK.
This does not apply to patents granted by the European Patent Office (EPO).
All trade mark and design rights granted by the EUIPO by 31st December 2020 now have automatic clones giving protection in the UK. No action is needed to preserve UK rights.
Applications pending at EUIPO on 1st January 2021 were not granted free UK cloned rights. The applicant needs to reapply in the UK to claim the EUIPO filing date.
The window for this closes 30 September 2021.
We remind all with EU trade mark and design applications pending on 1 January 2021 that they can still file for a UK right and claim the earlier EUIPO filing date. Please be advised that you will need to act quickly as this service is only available until 30 September 2021.
A link to the UK Intellectual Property Office’s official announcement is here. In summary, you are still able to:
- apply to register your EU right as a UK right within nine months of the end of the transition period (30 September 2021);
- claim the earlier filing date of the pending EUIPO right; and
- claim any valid international priority you had on the pending EUIPO application.
When you apply to register a pending right as a UK trade mark, the application will need to:
- relate to the same trade mark that was the subject of the EUIPO right application; and
- seek protection in respect of goods and services that are identical to, or contained within, the corresponding EUIPO application.
These are separate fee-bearing UK applications examined under UK practice. If your EUTM was opposed at EUIPO you can still apply in the UK. The Opponent may not be interested in opposing also in the UK, or their grounds of opposition may be different.
Please contact us if this is of interest.
The 30 September 2021 deadline cannot be extended.
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.