Following the vote back in 2016, the United Kingdom (“UK”) has been embroiled in a divisive process to finalise its exist plan from the European Union (“EU”). The UK officially left the EU on 31 January 2020 – and there is now a transition period, which is currently scheduled to end on 31 December 2020. There is an option to extend this transitional period for a further two years.
During this transitional period, EU law will remain applicable to the UK. European Union trade marks (EUTMs) will continue to be valid and protected in the UK. Thus, in practice nothing will change until the end of the transition.
At the end of the transition period, EUTMs will remain in force but will no longer have any effect in the UK. All registered EUTMS will be cloned into UK registrations. No action will be required from the owner of the trade mark and no costs will be incurred. Likewise, owners of International Registrations for trade marks through the Madrid system who have successfully designated the EU will be granted mirroring UK national rights.
No registration certificates will be issued for these new UK trade registrations which will then need to be renewed with the UKIPO, by the applicable dates and no longer with EU or WIPO. The registration will retain the trade mark filing date of the corresponding EUTM as well as, its existing registration number but prefixed with UK000….
Owners of applications for EUTMs which are still pending at the end of the transitional period, will be entitled to claim the benefit of the filing (or earlier priority) date of the EU filings in any mirroring UK applications filed within 9 months of the end of the transitional period. The UKIPO will levy standard official fees for any such UK applications.
Accordingly, where both UK and EU protection is required, it would make sense to ensure that EU protection is in place by the end of the transition period (likely 31 December 2020, as the UK Government has indicated that it has no desire to extend the transitional period).
In summary, if your EU marks proceeds to registration before the end of the transitional period, you will automatically be granted mirroring UK national rights. On the other hand, if your applications are still pending at the end of the transitional period, you will have 9 months within which to apply for a mirroring UK application.
For the moment, it is business as usual in respect of existing rights but care must be taken to ensure sufficient UK and/or EU protection is in place by year end.
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