UK Trade Mark Portfolio Management Considerations after Brexit
 

UK Trade Mark Portfolio Management Considerations after Brexit

By John Colbourn, Michael Browne, Gurminder S. Panesar, Peter Dawson and Joanne Gibbs at Wiggin


Key summary

Following the end of the UK’s Brexit transition period on 31 December 2020, there are now key changes to UK trade mark law which impact how EU trade marks function in the UK.

  • At 11:01 UK time on 31 December 2020, the Brexit transition agreement ended
  • Long expected changes to EU trade marks in the UK came into force. In particular, the UKIPO:

    – Created new UK TMs copied from existing EUTMs, and IR(EU)s
    – Created a new priority period – up to 30 September 2021 – for re-filing in the UK of any pending EUTMs or IR(EU)s as at 31 December 2020
    – Has changed rules on address for service at the UKIPO
  • Special rules now apply for pre-existing applications, ‘cloned’ new UK rights, proceedings and actions filed before 31 December 2020
  • The new system applies from 1 January 2021

The UKIPO has copied onto the UK trade mark register all EUTMs and International registrations registered in the EU as at 11pm on 31 December 2020. These are called ‘comparable’ trade marks in the legislation. 

All EUTM applications or pending International designations for the EU as at that date have not been copied onto the UK register. There is now a special ‘Brexit priority’ period of 9 months (to the end of September 2021) in which owners of such pending EUTMs and EU designations can re-file new applications in the UK and claim the same filing date and details.

The rules on addresses for service in the UKIPO have also changed.

  • All new UK TM applications will need a UK address for service, including applications claiming the ‘Brexit priority’ period.
  • The address for service on the EU register for all relevant registered EUTMs and EU designations has been copied onto the UK register for all comparable rights.
  • It is not necessary to immediately appoint a UK address for service for pre-existing UK or new UK comparables.
  • Special rules apply for pre-existing applications and proceedings in the UKIPO.
  • All official correspondence and notifications will be sent by the UKIPO (and third parties) to the address for service on the UKIPO register.

It will not be necessary to update the address for service for routine maintenance, such as renewals, recordal of licences, or for requesting routine corrections.

Where new actions are commenced against pre-existing UK TMs, or new comparable rights derived from EU designations, a new UK address for service will be required if there is not one already. Where new actions are commenced against new comparable rights derived from EUTM registrations, a new UK address for service will not be required for 3 years. New actions means any action against or relating to the registration, such as revocation or invalidity proceedings.

However, only UK laws apply to UK registrations and so only professionals with UK qualifications can advise on UK trade mark matters and many businesses may prefer consolidated management of their UK TM portfolio by a UK firm for that reason.

For a quick reference summary guide to these changes, click here

Access the original article here


Incopro Legal Network

This article was provided by Incopro Legal Network (ILN) member Wiggin as part our regular ILN Insights series looking at hot topics in the Brand Protection and IP space.

The ILN is an international group of trusted legal partners and experts who are market leaders in their territories in online rights protection. This Network provides access to legal expertise to meet the evolving challenges of online and offline IP infringement.

Wiggin

Wiggin LPP is a London-based law firm focused on media, technology, and IP. They advise clients on the financing, exploitation, and protection of their creative and commercial assets in these sectors.

Wiggin’s IP team specializes in protecting clients’ rights robustly and creatively. They are renowned for online content, anti-piracy and anti-counterfeiting work and have been at the forefront of the most significant cases in this field.

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