05 November 2020
Intellectual Property lawyer Lynn Richmond takes stock of what preparations companies will need to make to ensure that it is business as usual in 2021.
As we hurtle towards the end of the transition period on 31 December 2020, it is worth taking stock of what preparations companies will need to make to ensure that it is business as usual in 2021. That is easier said than done during these difficult times, however, there has been one positive development for EU trade marks owners.
Lynn Richmond, Partner
During the early stages of Brexit negotiations, it seemed likely that EU trade mark holders would be required to proactively register a UK trade mark to maintain protection in the EU. As of 1 January 2021, EU trade marks will cease to offer protection in the UK and, while it had initially appeared as though owners of EU marks may have to file separate applications to maintain a registered mark with protection in the UK, the UK Government confirmed that it would instead automatically create a “comparable UK trade mark” for every registered EU trade mark.
On 1 January 2021 the UK Intellectual Property Office will automatically create a UK registration for existing EU registrations in the same terms, effectively cloning the EU registration to provide ongoing protection in the UK. There will be no registration fee for the initial registration of the comparable mark and while no registration certificate will be issued for these marks, the registration will be noted on the public register of trade marks.
The cloned marks will be recorded in the UK trade mark register and will have the same effect and offer the same protection as if initially registered as standalone UK marks. These marks may be assigned and licensed in the same way as any other UK registered trade mark.
However, owners of EU trade marks should note that the cloned marks must be renewed in the normal fashion following the initial registration period. The cloned marks are also subject to invalidation and revocation proceedings. This is particularly important for the holders of EU marks who do not use or do not intend to use the cloned mark in the UK. Failure to use a registered trade mark in the UK for a period of five years can result in the revocation of the registration. Therefore, owners of EU trade marks who do not wish to obtain a comparable UK right can opt out by submitting a request to the Intellectual Property Office.
Parties who have a pending application for an EU trade mark which is not registered before 1 January 2021 should note that they will not be entitled to a comparable mark and, should they wish to obtain protection in the UK, a separate UK application must be submitted to the IPO.
Lynn Richmond lyr@bto.co.uk / 0131 222 2934