If you or your business hold a European Union trade mark (EUTM), there’s a change in procedure that you should know about.
The transition period following the UK leaving the European Union ends on 31 December 2020 (Exit Day). Until the Exit Day, all EU law still applies in the UK and all registered and pending EU trade marks will still provide protection in the UK.
Registered EU Trade Marks
After the Exit Day, any trade marks registered as an EUTM will automatically have a ‘clone’ registration added to the UK Trade Marks Register by the UKIPO, without charge.
This UK clone registration will be exactly the same as the EUTM and will afford you the same protection in the UK that you previously enjoyed. Your existing EUTM will function exactly the same, giving you protection in the remaining EU member states.
These new clone registrations will have the registration number of your EUTM, prefixed by UK009.
There are no fees involved in the creation of these records and it is anticipated that the process should be fairly straightforward.
The new clone trade marks will enjoy the same filing date as the original EUTM on which it is based. This means that when it comes to renewal, there will be two renewal fees to pay – one for the EUTM and one for the UK clone trade mark.
Clone trade mark points to note
It is important to note that these new UK ‘clone’ trade marks are independent of the EUTM – that is, they can be challenged, assigned, licensed or renewed separately from the EUTM. To this end, it is worth considering whether you would be able to prove use in the United Kingdom if challenged.
You will not be issued with a new UK registration certificate, however your clone record can be viewed at the UKIPO’s website. If we are currently recorded as representatives for your EUTM, we will record the clone in our system.
However, if we do not act as your representative, you will need to ensure that whoever you choose as representation for your mark is able to conduct themselves in front of the EUIPO: it is a stipulation that any UK law firm who is listed as representative for an EUTM must have an office within the European Union.
Pending EUTM Trade Marks
If your EUTM is still classed as pending on 31 December 2020, you will be able to apply to file to register a comparable UK trade marks in the nine months following Exit Day.
This new filing will retain the earlier filing date of the EUTM, and will honour any international priority or seniority you may have claimed on the EU trade mark.
The new UK application must be the same as the EUTM application, including the good and services claimed.
This procedure is optional, but there will be a cost associated with this as effectively you are filing a ‘new’ UK application.