In accordance to the Withdrawal Agreement Act concluded between the EU and the UK, on the 1 February 2020 UK left the EU.
The Withdrawal Agreement Act stipulates that during the transition period, which will last until 31 December 2020, EU Trademark law remains applicable to and in the UK.
From 1 January 2021 European Union Trade Marks (EUTMs) will no longer protect trade marks in the UK; however, the UK Intellectual Property Office (UKIPO) will create a comparable UK trade mark for all right holders with an existing EU trade mark registered by the end of December 2020. In this case, protection in the UK will be guaranteed with the same EUTM priority date without the need of additional filings or the payment of additional costs in the UK.
Differently, if you still have a pending EUTM application on 31 December 2020 , you will have to file the same trade mark in the UK within a 9 months period starting from 1 January 2021.This will enable you to keep the original filing date of your EUTM. The application must relate to the same trade mark that was subjected to the EUTM application and seek protection for goods and services that are identical to, or contained within, the corresponding EU application. From that time, you will have a fully independent UK trade mark that can be challenged, assigned, licensed and renewed irrespectively of the original EUTM.
Even for registered EU trademarks which are going through cancellation actions on 1 January 2021, the UKIPO will create comparable rights and, if the grounds are applicable in the UK, will reflect the outcome of the cancellation proceedings in the UK trademark. This means that, in principle (and if these rules do not unexdepectly change again), you will not need to launch a separate cancellation action on the comparable UK right after 1 January 2021.
With regard to future renewals, the comparable UK right will retain the existing renewal date of the corresponding EUTM. UKIPO is used to send a renewal reminder to any UK trade mark owner whose right is due to expire, usually six months ahead to the expiry date. This practise will be retained for all comparable trade marks dates that fall more than six months after January 2021.
Moreover, UKIPO will create a comparable UK trade mark for any EUTM which has expired in the six months prior to 1 January 2021, and not object of a late renewal action at EUIPO but still within its six-month late renewal period. This UK right will hold on expired status, whose effects will depend on the corresponding EUTM at EUIPO. So, the comparable UK trade mark will be automatically renewed as a result of the EUTM’s late renewal. On the other hand, if the expired EUTM is not late renewed with the EUIPO, the comparable UK trade mark will be removed from the UK register on the expiry corresponding date of the EUTM’s late renewal period, but with effect form 1 January 2021.
Valentina Baldassari
Riccardo Ciullo
