The Brexit transition period is coming to an end. EU trade marks will no longer have force in the UK from January 1, 2021. EUTM will be still in force in all the other 27 EU Member States.
We will briefly explain below how EUTM will be protected in the UK after said date:
- The EUTM already granted on 31 December 2020, will be automatically cloned into a comparable UK trade mark, free of charges, keeping the original EUTM filing/priority date, but without receiving neither a registration certificate nor a communication from UK IPO.
- The UK IPO will not immediately require appointing a UK address/representative for the cloned marks; however, it is recommended to appoint an authorized representative to manage TM rights properly.
- Pending EUTM applications on January 1, 2021, will have to be re-filed before the UK IPO if protection in the UK is required. In order to retain the same filing/priority date of the EUTM, such re-filing must be done on or before September 30, 2021. There will be costs involved and the new application will go through the UK examination process.
- Renewals for cloned or re-filed UK marks will need to be docketed and paid separately from the original EUTM. All EUTM granted before 31/12/2020 having their renewal date expiring after 01/01/2021, must be also renewed before UK IPO, even if the EUTM has been already renewed.
- As new EUTM applications will no longer extend to the UK, if protection in the UK is required, it will be necessary to also file a new TM application in the UK.
For tailored information about opposition, revocation or cancellation proceedings, including use requirement, please do not hesitate to contact us, our experts will be glad to respond to your queries.
If you want to also trust us your TM rights in the UK, please be informed that we will handle them in collaboration with a specialized UK firm, as we have been doing since many years ago.
We hope that this information will be of use to you. If you need any clarification or have any questions we are at your entire disposal.
Carlos Polo & Asociados