The UK withdrew from the EU (Brexit) on 31 January 2020 and is now in a transition period.
Under the Withdrawal Agreement, the transition period will be implemented up until at least 31 December 2020. All EU Trade Mark (EUTM) registrations granted prior to this date will result in a comparable registration in the UK. That comparable registration will be created with no administrative burden, no cost and no re-examination.
The new comparable UK registration will be vulnerable to cancellation for non-use if, at the point of being created, it was also vulnerable to such action before the EUIPO. There will be no new 5 year non-use term starting from the date that the comparable registration is granted. The EU registration date will carry across to the UK comparable registration.
Under the terms of the Draft Withdrawal Agreement, use in any one member state of the EU other than the UK, during the 5 year period immediately prior to the comparable UK registration, will be sufficient to validate the UK registration. By contrast, evidence of use from after the date of the comparable UK registration will only help if it is evidence of use in the UK (not in a member state of the EU other than the UK). The owner of the newly created UK registration will not be required to provide a UK address for service until 3 years after the expiry of the transition term.
All pending EUTM applications as of the expiry of the transition term will be afforded a priority term of 9 months to file a UK application claiming the benefit of the EUTM filing/priority date. That application will be subject to the usual UK fee arrangement and will be examined. We will notify all of our clients with pending EUTMs on our records of the need to file a priority application in the UK.
All existing EUIPO matters (pending applications and contentious proceedings) can remain with UK representatives (even those who have not separately obtained continuing representation rights before the EUIPO) up until 31 December 2020.
A Government notice regarding proposed numbering of comparable UK registrations in the event of Brexit can be found here.
We currently offer a 50% reduction in our service charge for filing in the UK when a corresponding UK case is parallel filed as an EU application or where you or your client already own an existing EU application or registration. This offer is not affected in any way by the attorney or address for service attached to the existing application or registration.
After 31 December 2020, it will become a necessity for clients who wish to have protection in both the UK and the EU to dual file in both jurisdictions. We will continue to have the ability both to file EUTMs at the EUIPO via our French entity J A Kemp France SNC and to file UK trade mark applications at the UKIPO through J A Kemp LLP.
Please contact your usual J A Kemp adviser if you have any general queries or would like to assess specific implications for your business.