30 September 2021 Brexit Priority Deadline And Other Important Points To Note Following Brexit
The UK formally left the EU on 31 January 2020, commencing a transition period which expired on 31 December 2020.
On 1 January 2021, the UKIPO carried out a “cloning” process meaning that all existing registered EU trade marks, protected EU designations of an International Registration and registered community designs were granted an equivalent or comparable trade mark or design registration in the UK.
Pending EU Trade Mark and Community Design Applications
EU trade mark applications and design applications that were still pending on 31 December 2020 were not automatically granted an equivalent registration in the UK.
The proprietors of pending EU trade mark applications and design applications have been given a period of nine months from the end of the transition period, so by 30 September 2021, to apply in the UK for the same protection.
Provided the UK application is filed prior to 30 September 2021 the UKIPO will recognise all filing dates and claims to earlier priority and UK seniority (where applicable for Trade Marks) attached to the existing EU application/registration.
As this provision expires this month it is advisable for the proprietors of EU applications or registrations, filed before 31 December 2020 and either not yet granted, or granted after 31 December 2020, to consider whether they require protection in the UK, and thus take advantage of this priority provision.
Address For Service Before The UKIPO
An address for service in the UK is required for the following:-
- New trade mark, design or patent applications.
- Clones which derive from an EU designation of an International Registration.
- Any contentious matters before the UKIPO e.g. opposition, invalidation or revocation proceedings.
- Any clones whose address for service is not within the EEA.
For a period of three years, calculated from 1 January 2021, there is no requirement for the proprietor of a UK comparable right (clone) that derives from an EU registration or registered community design, with an address in the EEA, to have an address for service in the UK. In this situation, an address for service in the UK will be required after 1 January 2024.
At present Dolleymores can become address for service before the UKIPO for no cost to the trade mark proprietor or their associate.
Where Dolleymores becomes address for service, details of the UK clone will be entered into our record system so renewal reminders, and other date sensitive correspondence relating to the ongoing maintenance and protection of the UK clone, is sent to the trade mark proprietor or their associate.
Any use of an EU trade mark in the UK after 1 January 2021 will not qualify as use in the EU.
Use of the EU trade mark in the UK prior to 1 January 2021 will be considered as valid use of the EUTM as long as it is within the specific five year period. As such, the value of the use made in the UK prior to 1 January 2021 will diminish in time.
As an example, use of an EU trade mark made in the UK during 2020, will assist in maintaining the validity of that EU registration until 2025. Any use made in the UK after 1 January 2021 will no longer assist in supporting the validity of an EU registration.
The same applies to the UK clone i.e. use of the registered mark during 2020 in an EU member state, not the UK, will assist in keeping the UK clone valid until 2025. Any use of the registered mark in the EU after 1 January 2021 will not be taken into account in assessing the future validity of the UK clone.
Questions or Concerns
Please e-mail your usual contact at Dolleymores, or a member of our team via Brexit@Dolleymores.com, if you have any questions or concerns relating to the Brexit provisions, require a new UK trade mark or design application to be filed, or would like us to become address for service before the UKIPO.