Knowledge & News

Brexit -Further Trade Mark Guidance from the UK Government

5 March 2019

With the planned date for the UK’s departure from the EU getting closer, the Government has published further guidance as to how a ‘no-deal Brexit’ might impact trade mark law here. Below is a summary of what is new. 
 
First, we have confirmation that the Statutory Instrument addressing trade mark law in the case of a no-deal is no longer a draft. The content in the finalised version is exactly as in the draft.  Here is a link to the finalised version of the Statutory Instrument.
 
The Guidance provides new procedural information across a number of areas, the most important of which relate to the renewal of trade marks and the numbering system for new UK trade marks cloned from existing EU Trade Marks (EUTMs) (so-called “comparable trade marks”.) Below we outline the new procedural information in the SI
 
Registration No.
 
The number allocated to comparable trade marks will be the last 8 digits of the EU trade mark (EUTM) prefixed with UK009 (Ex. EUTM No. 000000977 will be UK00900000977)

Renewals
 
Comparable trade marks will need separate renewal – this includes where the comparable EUTM registration has already been renewed and where the deadline for renewal was within 6 months of exit day. 
 
This is contrary to the government’s previous advice. The previous guidance simply said that the newly cloned right would retain the renewal date of the corresponding EUTM.  The new guidance creates an exception to that for EUTMs that were due for renewal in the 6 month period after exit day. We will be creating records in our system for all new comparable rights and will send renewal reminders to owners of rights affected.
 
There will be insufficient time for the UK Intellectual Property Office (UKIPO)  to issue the standard renewal reminder in advance of the expiry date for those comparable UK trade marks which expire within the six months immediately after exit day.
 
Therefore, the UKIPO will send a reminder on the actual date of expiry:

  1. Informing trade mark owners that the comparable UK Trade Mark has expired
  2. Providing owners with a further six-month period within which to renew the right (not subject to additional renewal fees)

EUTMs which have expired in the six months prior to exit day but are still in their six-month late renewal period will be cloned into comparable UK trade marks. These will hold an ‘expired’ status, and their continued effect in the UK will be dependent upon late renewal of the corresponding EUTM at the EU Intellectual Property Office (EUIPO). In this case, owners are not required to pay any renewal fees in respect of first renewal of the comparable UK trade mark.
 
Certificate:
 
The UKIPO will not issue a UK registration certificate for any new comparable trade mark: details of the new registration will available online presumably with certified copies available if owners want them.
 
Pending applications
 
It is confirmed that EUTM applications which are pending on exit day will not be automatically converted into comparable trade marks. The UKIPO digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding EUTM application (this form will need to be filed during the nine-month period after exit day).
 
Opt-out
 
The UKIPO has created a notice template which owners of existing EUTM should use if they want to request an opt-out.
 
Priority and seniority
 
Priority and seniority will be inherited by the comparable UK trade mark. The UKIPO will provide with a means for recording priority and seniority dates for applications corresponding to a pending EUTM applications filed within nine months after exit day.
 
Certification and collective marks
 
Regulations governing use of the EU mark will not be automatically imported onto the trade mark register. When the UKIPO needs to inspect the regulations (for example, where the mark becomes subject to proceedings), they will contact the owner of a comparable UK certification or collective mark, requesting a copy of the Regulation and a translated English version if not in English. Failure to provide translated regulations will result in the loss of rights.

Authors

Tom Farrand

Tom Farrand Head of Trade Marks London (UK) Chartered (UK) and European Trade Mark Attorney

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