Cloning rights and filing strategy for trade marks post Brexit

Cloning rights and filing strategy for trade marks post Brexit

This article was written on 11 September 2019. The content was relevant at the time of writing, but may have since changed. For our latest Brexit updates, please access our Brexit Hub.

  1. ​​Once the UK leaves the EU, the European Union Trade mark (EUTM) will no longer cover the United Kingdom. 

Practical tip: Check with your clients whether UK coverage is required.

  1. For all registered EUTMs, the UK IPO will create comparable UK trade marks, which will be recorded on the UK register.

  2. These comparable UK rights will retain the filing dates recorded against the corresponding EUTM and will also inherit any priority and/or seniority dates. They will be fully independent UK trade marks which can be challenged, assigned, licensed or renewed, separately from the original EUTM.

  3. The UKIPO has confirmed the new numbering convention for the cloned rights. A prefix “UK009” will be applied to the original 8-digit EUTM number. So, the cloned right stemming from EUTM no. 00000977 will be UK00900000977. No certificate of registration will be issued for the cloned right, but we can provide IPO register extracts.
    Practical tip: Ensure you have a system for recording these new rights on your records.

  4. It will be possible for holders of EUTM registrations to opt out of having their EUTM registration cloned into a UK registration, provided that the holders have not used the comparable right in the UK. The effect is that the cloned right will be deemed to have never existed.
    Practical tip: Check whether your client needs to opt out of any cloned rights, for example due to contractual obligations.

  5. Holders of pending EUTM applications will be able to apply to register the mark in the UK. In order to maintain the filing date of the EUTM application, and any priority and/or seniority dates, holders must apply within a 9 month period following exit. The UK application must be in respect of goods and services which are identical to, or contained within, the corresponding EUTM application.  The existing UK application fees will apply. The application will be examined in the same manner as a normal UK application. 
    Practical tip: Docket 9 month deadline once Brexit date is confirmed

  6. The UK trade mark and EUTM systems operate a 10-year renewal term, calculated from the date of application. The UK cloned trade marks will retain the same renewal date as the corresponding EUTM. 
    Practical tip: Docket separate renewal dates

  7. It was hoped that the procedure would allow for early renewal of the EUTM registration (within the 6 months prior to expiry) to avoid having to also renew the cloned UK trade mark. The UKIPO has clarified that this will not be possible; the cloned UK right will also need to be renewed.

  8. Cloned rights will be created for any EUTM registration which expired in the 6 months prior to exit. These cloned trade marks will have an expired status, but if the underlying EUTM registration is renewed in the 6 month window for late renewal, then the cloned UK trade mark will also be deemed to have been renewed.

  9. EUTM registrations for collective and certification marks will be automatically cloned into the UK. However, the UKIPO will not import the governing regulations for such marks. Instead, the UKIPO will contact the holder in the event that it needs to inspect the governing regulations, such as when the registration is the subject of proceedings. A UK translation of the regulations will be required. In the event that translated regulations are not filed then the registrations will be cancelled.

  10. For new and important marks, consider filing a United Kingdom application at the same time as an EUTM, as this will not be affected by any twists and turns in the Brexit negotiations.

If you have any concerns or queries, please contact Ryan Pixton or your usual Kilburn & Strode advisor.

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