Brexit - are you prepared? UK Trade Mark proceedings filed on or after 1 January 2021: 3 key points to remember

United Kingdom

The UK left the EU at the beginning of this year and the transition period during which the UK is treated as if it was still a member of the EU is coming to an end on 31 December 2020, 11pm (UK time).  The UK Intellectual Property Office (UKIPO) has now published its long-awaited guidance on some elements of UK trade mark proceedings filed on or after 1 January 2021 (Tribunal Practice Notice (2/2020): End of Transition Period impact on tribunal proceedings).

For UKIPO trade mark proceedings that commence on or after 1 January 2021:

  • Registered European Union Trade Marks (EUTMs) and granted International Registrations designating the EU (IRs (EU)) will no longer be protected in the UK. Instead, they will be protected as domestic comparable UK trade marks which will automatically come into existence on 1 January 2021 and which will mirror the particulars of the relevant EUTM/IR (EU) such as, for example, filing/priority date, proprietor, goods/services. From 1 January 2021, rights holders can rely on these new comparable UK rights in enforcement proceeding such as UK trade mark opposition proceedings or UK trade mark cancellation actions;

  • Owners of EUTMs and IRs (EU) which are pending on 31 December 2020 can retain trade mark protection in the UK, including the priority/filing date of their pending EUTM/IR (EU), by re-filing the EUTM/IR (EU) in the UK in the period  from 1 January 2021 until 30 September 2021. These marks have to be re-filed before they can serve as earlier rights in UK trade mark proceedings which are filed on or after 1 January 2021. Under certain limited - circumstances it may be possible to add comparable UK trade mark applications as additional earlier rights to pending UK trade mark proceedings; and

  • From 1 January 2021, new address for service rules at the UKIPO come into effect. For all new UK trade mark proceedings, filed on or after 1 January 2021, a UK address for service is needed unless the challenge is based on a registered comparable UK right created from an EUTM registration. Please see here for our update about the new address for service rules.

These changes apply irrespective of the outcome of the free trade negotiations between the EU and the UK.

Please do let us know if you have any questions.

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