Deadline looming to secure UK protection for EU trade marks

Existing EUTM and RCD registrations, as well as international trade marks under the Madrid Protocol and international designs under the Hague Agreement designating the EU, no longer cover the UK since Brexit. The UK element of EUTMs and RCDs registered before 31 December 2020 were automatically cloned into UK national trade marks or registered designs at the end of the Brexit transition period, but EUTMs pending and RCDs pending or not published on 31 December 2020 were not.

Rights holders have until 30 September 2021 to file an application for a UK national trade mark or registered design with the same filing and priority date as the pending EUTM or RCD. The UK Intellectual Property Office (UKIPO) said rights holders should file applications as soon as possible, with early applications enabling early examination and time for refiling if necessary.

Intellectual property expert Florian Traub of Pinsent Masons, the law firm behind Out-Law, said: “The 30 September deadline is a potential pitfall for applicants seeking trade mark and registered design protection. There is still time though to refile applications with the UKIPO provided action is taken without further delay.

“Missing the 30 September deadline is not an option for applicants wanting trade mark or registered design protection in the UK. Although the original EU application will proceed regardless of Brexit, failing to refile in the UK could result in a mismatch of IP protection across the EU and the UK. It is possible that a business might not then be able to launch and market products uniformly across those territories, impacting sales strategies and ultimately the bottom line,” Traub said.

Failure to meet the deadline would result in the loss of the UK element of protection once held under the EUTM or RCD, and the ability to claim the same filing and priority dates of the equivalent EU right. This could have ramifications for businesses later seeking to enforce their rights against any conflicting registration or use of a similar mark or design by a third party.

Trade mark expert Matthew Harris of Pinsent Masons said: “It is clear that there is a general lack of awareness of the 30 September 2021 deadline and we are urging rights holders to understand the significance of this date and take action without delay to ensure their future IP protection in the UK.”

Harris said refiling was relatively straightforward, but legal advice would be helpful for anyone seeking to protect their EUTM or RCD in the UK.

“The 30 September deadline is absolute, so the refiled application must be filed correctly by that date. No extensions will be possible,” Harris said.