Trade mark owners should be alert to the deadline of 30th September 2021 to re-file EU trade mark (EUTM) applications that were pending on 31 December 2020 in the UK. Delay could lead to a potential loss of rights.
Due to the impact of Brexit, any EUTM application that was pending as at 11 pm on 31 December 2020 no longer covers the UK.
These EUTM applications are proceeding only in relation to the rest of the 27 Member States of the EU.
Applicants for EUTMs that were pending at 11 pm on 31 December have nine months to reapply for the equivalent UK rights. The usual fees and forms will be required, but the original filing, priority, and any UK seniority dates will all be retained.
The deadline of 30th September 2021 to re-file EUTM applications in the UK is not extendable.
The application must cover identical or more restricted goods and services and the re-filed UK application will be examined and prosecuted in the usual way. If the details of the application do not match those of the corresponding EUTM application, it will not be possible to claim the earlier EU filing or priority dates.
The only seniority claims that will be recognised will be claims from an earlier UK trade mark, which if it still exists may remove the need to re-file the EUTM application in the UK.
Owners of pending EU designations of an International Registration (IR) cannot re-file as a new UK designation of the IR – any new application will be a national application. Owners will still be able to subsequently designate the UK under the IR in the usual way, however doing so will not maintain the original filing, priority and UK seniority dates of the EU designation. It will however be possible to use a UK designation to replace a comparable (or any other) UK registration.
The UK IPO has developed two methods for applicants to notify details of the ‘parent’ EU right. Firstly, if the application is for a logo mark, it is necessary to enter the details of the link to the EUTM in the mark description box of the application form, including the number and filing date of the EUTM. If it is a word mark, a separate email needs to be sent to the UKIPO after filing and a request can be filed for a new filing receipt to be issued containing the details of the link to the EUTM application. We are hoping that this process will be streamlined in the future.
Unlike with the UK comparable trade mark registrations ‘cloned’ from EUTM registrations, the re-filed UK applications will not be given an application number that indicates that it is a re-filing of an EUTM application. It will therefore be necessary to check the details of the application and subsequent registration to understand if there is a claim to priority from an earlier EUTM application.
A critical point to remember is that, although the re-filed UK applications will show the filing, priority and any UK seniority date of the ‘parent’ EUTM application, and enforcement rights will date back to the earlier dates, the renewal date will be calculated from the actual date of filing in the UK.
The UK IPO has noticed that many of the EUTM applications that are eligible to be re-filed have not been filed in the UK as yet. There is a concern that applicants will wait until the last minute to re-file which may cause an administrative backlog. We are therefore encouraging our clients to check now whether the EUTM application should be re-filed.
From 1st January 2021, all new and re-filed UK trade mark applications must have an address for service in the UK, the Channel Islands or Gibraltar. To assist our clients, Mewburn Ellis has decided to waive our service fees to re-file pending EU trade mark applications. Please get in touch with us for further details.
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