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Detailed guide: EU trade mark protection and comparable UK trade marks from 1 January 2021

Government Digital Service

December 3
13:25 2020

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From the 1 January 2021, EUTMs will no longer protect trade marks in the UK. Under the Withdrawal Agreement Act, on the 1 January 2021, the IPO will create a comparable UK trade mark for all right holders with an existing EU trade mark.

Existing EUTMs will still protect trade marks in EU member states. UK businesses can still to apply the EU Intellectual Property Office for an EUTM.

There will be no changes to UK-registered trade marks as a result of the UK leaving the EU.

If you have a pending EUTM application, youll be able to apply to register the same trade mark as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021. Youll keep the earlier filing date of the pending EUTM.

Receiving a comparable UK trade mark

On 1 January 2021, IPO will create a comparable UK trademark for every registered EU trade mark (EUTM). Each of these UK rights will:

  • be recorded on the UK trade mark register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original EUTM filing date
  • keep the original priority or UK seniority dates
  • be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM

You will not:

  • need to pay for your equivalent or comparable UK trade mark and there will be as little administration involved as possible
  • receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK

Registering a pending EUTM application as a UK trade mark

We will only create a comparable UK trade mark for EUTMs registered before 1 January 2021.

If you have an EUTM application thats still pending on 1 January 2021, youll be able to:

  • apply to register the same trade mark as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021
  • retain the earlier filing date of the pending EUTM
  • claim any valid international priority you had on the pending EU application, along with any UK seniority claims recorded against it

If you apply to register a pending EUTM application as a UK trade mark, the application must:

  • relate to the same trade mark that was the subject of the EUTM application
  • seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application

If the details of your application do not match those of the corresponding EUTM application, you will not be able to claim the earlier EU filing or priority dates.

You must submit your application within nine months after the end of the transition period. We will then:

  • treat the pending EUTM application as a UK application
  • examine it under UK law

The usual UK fees of 170 will apply, including one class of goods or services, and an extra 50 for each additional class.

You can fill in the paper forms if you want to apply by post. This costs 200 for one class plus 50 for each additional class.

You may be intending to file a UK trade mark application that does not correspond to a pending EUTM application in the nine months after the end of the transition period. If so, you should note that someone could ile a UK application after yours and claim the earlier date of a corresponding EUTM application that was pending on 1 January 2021. Where this happens, the later-filed UK application will take precedence.

Before applying for a UK trade mark in the nine months after the end of the transition period, use the EU Trade Mark Register to check whether any EUTM applications:

  • were pending on 1 January 2021
  • hold a filing or priority date earlier than your own

During the examination process we also conduct a search for geographical indications, to ensure your trade mark application does not conflict with these prior rights. Therefore, you should also be aware that the above mentioned corresponding period could also apply to any geographical indications that are pending at the end of the transition period. This would apply where the GI producer applies to the UK GI scheme (administered by Defra) within 9 months of the transition period, and claims the application date of their earlier EU GI application.

If you are thinking of filing for a UK trade mark application, then you may want to search the EU GI register as well as the EUTM register to check for geographical indications pending on 1 January 2021 that could conflict with your trade mark.

Priority and seniority claims

A priority date claimed under the Paris Convention that has been recorded against the corresponding EUTM will be inherited by the comparable UK trade mark.

Accordingly, where proceedings involve a comparable UK trade mark with a priority claim inherited from the corresponding EUTM, the date of that priority claim will have effect.

Seniority is a concept which derives from EU legislation and has applied only to EUTMs and UK trade marks that have been converted from EUTMs. From 1 January 2021, it will also apply to the UK comparable trade marks.

Seniority allows a business to consolidate its multiple national registered trade marks into one single EUTM by retaining the senior dates of those national rights and recording them againstthe EUTM.

Where the national marks are surrendered or allowed to lapse, the owner is deemed to have the same rights as they would have if the earlier national mark(s) had continued to be registered.

Seniority can determine the effective date of an existing EUTM. Seniority claims based on earlier UK or International (UK) trade marks will be recognised.

The new law means that any seniority claim based on an earlier UK or International (UK) trade mark that has been recorded against an EUTM will be retained by the comparable UK trade mark.

Automatic retention of existing priority and seniority dates

The retention of existing priority and seniority dates in comparable UK trade marks will be automatic.

As the holder of an EU right, you will not have to inform IPO of any earlier effective dates.

This is because filing, priority and seniority information will be automatically transferred onto the new UK right.

The UK application process will provide you with a way of recording priority and seniority dates for applications corresponding to pending EUTM applications filed within nine months after the end of the transition period.

Pending cancellation actions

Registered trade marks can be challenged by third parties under the grounds of revocation and invalidity (collectively known as cancellations). If these actions succeed, then the right is removed fully or partially from the register.

At the end of the transition period, we will create UK comparable trade marks for all EU trade marks registered at 31 December 2020. This includes EU trade marks that are subject to cancellation proceedings.

The Withdrawal Agreement requires that where an EU trade mark is subject to ongoing cancellation proceedings at the end of the transition period, and is subsequently cancelled, the outcome shall be applied to the corresponding UK comparable right.

This means that if you own an EU trade mark that is subject to cancellati

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