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New guidance: Guidance clarifies how EU trade marks will be automatically registered as UK trade marks when the Brexit transition period expires on 31 December

EU trade mark owners will welcome guidance from the UK Intellectual Property Office (UKIPO) explaining how it will manage the process of automatically registering their EU trade marks as UK trade marks when the UK’s Brexit transition period ends.

October 2020

This update was published in Legal Alert - October 2020

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

The reasons UKIPO are automatically registering EU marks as UK marks too at the end of the transition period are:

  • Registration of a mark as an EU trade mark means it is protected in every EU member state through the one registration.
  • Technically, when the UK left the EU on 31 January 2020, EU trade marks should no longer have been protected in the UK, as it was no longer a member state. However, the EU and UK also agreed a transition period, effective from that date until 11 pm on 31 December 2020, during which the UK would continue to be treated for most purposes, including trade mark and other intellectual property law, as if it were still an EU member state. So, marks registered as EU trade marks continued to be protected in the UK during that period as they were when the UK was a member of the EU.
  • However, at the end of the transition period, an EU trade mark registration will no longer protect a mark in the UK because the UK will no longer be treated as if it were still an EU member state.

The UKIPO has therefore said it will, from the end of the transition period, issue a comparable UK registered trade mark for each current EU registered trade mark. The guidance says that:

  • A general notice will appear on the UKIPO website ‘around 31 December 2020’ telling EU trade mark owners that they now own a comparable UK trade mark.
  • Owners of one of these new UK marks will not be sent official, individual notification of their new trade mark, or a registration certificate. If the owner wants evidence of their UK mark they should print out details of it from the online UK trade marks database.
  • The new UK marks will be allocated the same registration number as their original EU trade mark, but prefixed ‘009’.

Operative date

  • 1 January 2021

Recommendation

  • Owners of one of the new UK trade marks should check the UK online database on 1 January 2021 to ensure their automatic registration appears on it and, if required, print out details of their new mark.

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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