2021 update
From 1 January 2021, the UK is no longer covered by EUTM trade mark registrations, Registered Community Designs and International Trade Marks designating the EU. New UK comparable rights have been created for all EU-wide rights registered as of 1 January 2021. Brexit also affects customs applications, exhaustion of rights, and contractual agreements. What should owners and their representatives be doing to get ready?
Trade marks and design registrations
The UK IPO has now created ‘cloned’ comparable rights from EUTMs, EU designations of international Registrations (IRs) and Registered Community Designs (RCDs) which were registered on 1 January 2021. These comparable rights enjoy the same filing and priority dates as the EU rights. The numbering system is based upon the EU official number. These rights have been created automatically, and without charge, unless the holder of the EU-wide right previously opted out. Renewal will be due at the same time as the EUTM or RCD, but must be done through the UK IPO.
The holders of any pending EU applications as of 1 January 2021 can request a cloned UK comparable right application, which will enjoy the same filing and priority dates as the EU right. UK official fees are payable, and the deadline for requesting such an application is 30 September 2021. This hard deadline cannot be extended.
UK address for service
The UK IPO has recently amended its rules, and (subject to parliamentary timetable) will require a UK address for service for any new action before it from 2021. There is a three year grace period for cloned comparable rights before they would require a UK address for service. We would be delighted to take over representation of cloned UK rights, just get in touch here to discuss how we can help.
Customs
If a rights holder has filed an EU-wide Application for Action (AFA) through the UK Border Force, this has ceased to have effect outside the UK after 31 December 2020. It is necessary to file a separate EU AFA through an EU27 Customs Authority. If a rights holder has filed an EU-wide AFA via one of the EU27 Customs Authorities covering the UK, this will have ceased to have effect in the UK after 31 December 2020 but will remain valid in the EU Member States designated. A separate application will need to be filed with the UK Border Force.
Exhaustion of rights
The UK government now recognizes exhaustion of rights for goods first placed on the market in the EEA by the rights holder. Goods placed on the UK market by the rights holder first may no longer be considered exhausted in the EEA, and may therefore face objections from rights holders and customs officials in the EEA. This means that there is now asymmetric exhaustion of rights.
Agreements
For an EU-wide right (such as an EUTM or RCD) subject to any agreements, assignments, licenses and security interests, effective prior to the end of the transition period, the agreement will carry over to the respective cloned UK right. However the wording of that agreement will require amendment to reflect the creation of the new UK right.
For further analysis and information, visit our Brexit section or contact your usual Kilburn & Strode advisor.
Practical tips:
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Make sure your records are updated to include these newly created UK rights which have automatically come into existence, including renewal dates;
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Docket the 30 September 2021 deadline for filing comparable rights applications from pending EUTMs and EU design applications;
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Consider appointing a UK firm as address for service at the UK IPO;
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Review your AFA customs applications and take action with the UK Border Force;
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Review existing agreements to see whether they need amending to take into account the newly created rights;
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Review use of the EU and UK comparable right trade marks; is the use of the marks sufficient to defend both from non-use attack?