Comparable UK trade marks and designs

Deadline - 30 September 2021!

Following the end of the Brexit transition period, from 1 January 2021, European Union (EU) trade mark and design registrations no longer cover the United Kingdom (UK). However, there is a mechanism in place to enable EU trade mark and design applications and registrations, which were in progress or already registered, to continue to take effect in the UK.

1. Existing EU trade mark and design registrations

For all EU trade mark registrations and design registrations ('Registered Community Designs') which were registered and in force on 31 December 2020, the UK has automatically created a comparable UK trade mark registration or design registrations. These have inherited the filing date and priority date of the EU cases and have the same renewal dates. Proprietors now have corresponding EU and UK registrations which will require to be renewed independently if both are to be kept in force.

2. EU designations of international (Madrid Protocol) trade mark registrations and Hague agreement designs.

As with EU trade mark registrations, the proprietors of international registrations which designate the EU, for which a statement of grant of protection had issued by 31 December 2020, now also have comparable UK trade mark registrations. These are separate to the international registrations and will require to be renewed independently at the next renewal date of the international registration. Something similar applies for Hague Agreement design registrations which cover the EU. We wonder what proportion of holders of international registrations will be aware of these new rights and understand that they are distinct from their international registrations.

3. Pending EU trade mark and design registrations

For any EU trade mark application, or application for a Registered Community Design which was not yet registered but was pending as of 31 December 2020, the proprietor has the right to file a comparable UK trade mark application which will inherit the filing date and priority date of the EU right. These require to be filed by 30 September 2021. They are said to 'claim priority' from the EU right although this is an unsual and imprecise use of the phrase 'claim priority' and does not refer to the normal Paris convention priority right. In any event the new UK applications may inherit the filing date and convention priority date of the EU right.

For each pending EU trade mark application, any application for a comparable UK trade mark must be for the same mark and for goods and services which are within the scope of the EU trade mark application. It is possible for the comparable UK trade mark to cover only some of the classes of goods and services of the EU application, but the scope of protection cannot be extended beyond the scope of the EU right. There are official fees for filing these applications, which are the same as the official fees for regular UK trade mark and design applications.

Once filed, the new UK applications are processed and examined in exactly the same way as conventional UK applications, hopefully leading to new registrations which are independent of the EU rights from which they are derived.

4. International Trade Mark Registrations (Madrid Protocol) designating the EU

For any international trade mark registrations under the Madrid Protocol which designate the EU and where the Statement of Grant of Protection had not issued by 31 December 2020, a comparable UK trade mark application may be applied for as per section 3 above. It is however necessary that WIPO has issued the international registration before 1 January 2021. If the international registration date is not received until after this date there may be an additional period of time to allow the comparable UK trade mark application to be filed for.

5. Numbering of automatically created registrations

For EU trade mark registrations which are granted by 31 December 2020, the automatically created comparable UK trade mark registration has a registration number which begins with UK009 followed by the last 8 digits of the EU registration. Where the comparable UK trade mark registration is based on an EU designation of a Madrid registration the UK registration number begins with UK 008 followed by the last 8 digits of the Madrid registration number. For EU design registrations granted by this date, the automatically created comparable UK design registration has a registration number which is the same as the EU registration number preceded by a 9.

Detailed rules have been issued by UK IPO addressing issues such as what happens where an EU right is subject to an opposition or invalidity action as at 31 December 2020, or within a renewal grace period etc.

UK IPO guidance on EU trade mark protection and UK comparable rights can be found here.

UK IPO guidance on EU design protection and UK comparable rights can be found here.