Post-Brexit trade mark rights: Barker Brettell explains the updated processes

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At the end of the Brexit transition period the UKIPO created comparable UK rights for all EU registrations and EU designation rights. This only applied insofar as registered rights; for all pending EU rights (applications or designations by way of the Madrid Protocol), separate UK applications have to be filed. Provided these UK applications are filed before 30 September 2021, they can claim the priority filing date of the EU right.

Also, six months down the line, we now have more clarity on some of the finer details of the processes:

Filing dates of clone applications

For clone marks, the date of the EU application will be the relevant date for establishing which rights take precedence, however the deadline to renew will run from the UK filing date.

The date of the EU application will be listed as a priority date, which means you could be in a situation where the UK clone mark has two different priority dates, one from the EU application and one from another mark, from which the EU application claims priority.

This was not originally the case and so to avoid confusion, the UKIPO will add a statement which clearly identifies that these cases are filed under Article 59 of the Withdrawal Agreement.

Status of an EU application on 31 December 2020

In order to file a UK clone application, the EU application had to be ‘pending’ at the end of the Brexit transition period. It does not matter what stage the EU application was at and it does not matter what happens to the EU application after this date. What is relevant is that the mark was ‘pending’ on 31 December 2020.

Renewal dates of comparable UK rights created from subsequent designations of the EU to Madrid Protocol marks

It has been confirmed that the UKIPO is using the date the subsequent designation was filed, as the date to trigger the renewal of the comparable UK right – and not the date the Madrid Protocol mark – will be renewed.

Recently renewed marks

For EU registrations renewed close to the end of the transition period or in the grace period, the UK register may not be updated to reflect the fact that the comparable UK right should also be showing as renewed. However, the UKIPO has a monitoring tool which will check for this situation, but only for EU registrations.

For EU designations which were renewed as part of the Madrid Protocol mark, the comparable UK rights may not be showing as renewed. The UKIPO is unable to check this and therefore, clients need to make their own checks.

Inconsistencies in the registration dates for UK comparable marks created from an EU designation

In some cases, the date of entry in the register is listed as the date the Statement of Grant was issued by the EUIPO. However, in other cases, the date of entry in the register is listed as the filing date. The UKIPO is investigating this point and will provide a further update when it has one.

Recordals filed at the EUIPO before 31 December 2020

The UKIPO has confirmed that any changes of name/assignments/limitations that were filed pre-end of the Brexit transition period, but recorded post Brexit, will not take effect on the UK register. We will need to file separate requests with the UKIPO to record these changes.

Replacement requests (TM28)

For those UK clone marks which were created from an EU designation, one option is to subsequently designate the UK to the Madrid Protocol mark and then apply to replace the comparable UK trade mark, leading to centralised management. The trade mark owner can request that the UKIPO take note of the replacement in the UK Register by filing form TM28. To do this, the UK registration has to be registered at the time of filing a replacement request, so a comparable mark that has expired, will need to be renewed before requesting replacement.

We continue to work with our clients to provide assistance in protecting their trade marks in the UK, EU and further afield.  As one of the largest filers of UK trade mark applications, we have considerable experience and expertise in helping our clients with their post-Brexit issues.  For the latest advice please get in contact with your usual Barker Brettell trade mark attorney, or the author.