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By Amanda Mack

As of 1 January 2021, EUTMs now no longer protect trade marks in the UK. Under the Withdrawal Agreement Act, on 1 January 2021, the UKIPO automatically created a comparable UK trade mark for all right holders with an existingEU trade mark registration.

These rights were immediately and automatically replaced by equivalent UK rights, at no cost to the holder. If you own an existing right, you do not need to do anything at this stage, apart from consider the address for service requirement, as described in our summary below.

Existing EUTM registrations will still protect trade marks in EU member states

There is no change to UK registered trade marks as a result of the UK leaving the EU.

The UKIPO’s rules on address for service have changed. From 1 January 2021 you will need an address in the UK, Gibraltar or the Channel Islands to file a UK trade mark application. This means the UKIPO will no longer accept addresses in the EEA.

In the case of pending EUTM applications, you will be able to apply to register the same trade mark as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021, keeping the earlier filing date of the pending EUTM. As above, you will require a UK address for service.

The key changes for both new rights and existing rights are summarised in more detail below.

Please contact us should you require any more general information or wish to discuss specific aspects of these changes in relation to your existing portfolio, or plans for future development of the portfolio.

Summary of changes

Comparable UK Trade Marks that expire within six months after 1 January 2021

The ‘late’ renewal of comparable UK trade marks which have expired within six months after 1 January 2021 will not be subject to an additional renewal fee.

Where the comparable UK right is not renewed, it will be removed from the register.  Please contact us for further information about possible restoration beyond this point.

A comparable UK trade mark with a 10-year renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action and fee (see below).

This is regardless of whether a renewal action was taken on the corresponding EUTM before 1 January 2021.

Comparable UK Trade Marks that expired before 1 January 2021

The UKIPO created comparable UK trade marks from any EUTM which:

  • has expired in the six months prior to 1 January 2021
  • has not been subject to a late renewal action at EUIPO but is still within its 6-month late renewal period

These UK rights will hold an ‘expired’ status, and their continued effect in the UK will depend on late renewal of the corresponding EUTM at EUIPO.

Where the corresponding EUTM is subject to late renewal, the renewal will also have effect on the expired comparable UK trade mark.

This means that the comparable UK trade mark will be automatically renewed as a result of the EUTM’s late renewal.

In this scenario, you will not have to pay any renewal fees in respect of first renewal of the comparable UK trade mark.

If the expired EUTM is not late-renewed at EUIPO, the comparable UK mark (which was created on 1 January 2021 in the UK) will be removed from the UK register on expiry of the corresponding EUTM’s late renewal period, but with effect from 1 January 2021.

Comparable UK Trade Marks and Existing UK registrations – Address for Service  

The UKIPO’s rules on address for service have changed. From 1 January 2021 you will need an address in the UK, Gibraltar or the Channel Islands to file a new UK trade mark application, and for contentious proceedings. Although there are some exceptions to the requirement for a UK address for service for comparable and existing trade mark registrations, there are benefits to having a UK address for service for all your UK intellectual property matters at the UKIPO. Your UK representative will receive all official correspondence on your behalf.  In the absence of a local address for service the UKIPO will, in some circumstances, correspond directly with the trade mark owner.

Our recommended approach is for us to simply to take over the equivalent UK re-registrations / registrations and to record ourselves as the local representative and address for service for renewal reminders and other correspondence.

Please contact us for favourable rates, depending on the number of cases. 

UK Trade Marks – Oppositions and Cancellations

Due to the unique circumstances of each case, please contact us with an outline of the background, so that we can advise further on possible contentious issues. A UK based address for service is required in most contentious scenarios.

Costs for specific follow up actions

UK Filings for New Trade Marks

Professional Fees:

  • £300 for filing in one class
  • £60 per additional class
  • £100 priority claim (plus VAT where applicable, and disbursements)

Official Fees:

  • £170 basic fee for one class:
  • £50 per additional class

If no substantive objections are raised by the UKIPO the application/s would proceed to registration with around an additional £200-250 (plus VAT) payable before registration in each case.

Many applications proceed without issue. However, if any objections are raised and/or third party marks are reported at Examination stage, additional charges would be incurred.

The applications are also open to third party objections at the Publication stage, and if any oppositions were to be filed by third parties objecting to your application significant costs can be incurred. If such issues arise we will report with the options for proceeding. We will be happy to provide an indication of further costs at this stage.

Renewing Existing EUTM Trade Marks as Comparable UK Trade Marks

A separate renewal fee will apply for each comparable UK trade mark and the existing EUTM.

For future renewals, the comparable UK right will retain the existing renewal date of the corresponding EUTM. If paid by the original deadline the renewal fees in the UK are:

Professional Fees:

  • £120, plus £50 per additional class

Official Fees:

  • £200 basic fee, plus £50 per additional class (plus VAT where applicable, and disbursements)

Comparable and Existing UK Trade Marks – Address for Service  

Please contact us for favourable rates, depending on the number of cases.