From 1 January 2021 the United Kingdom will cease to follow EU rules, bringing significant changes to trademark law in the United Kingdom and European Union that are relevant to all owners of UK and EU trademarks.
As of 1 January 2021, European Union trademarks (EUTMs) will cease to offer protection in the United Kingdom. The UK Intellectual Property Office (UKIPO) has therefore put in place mechanisms to ensure continued protection to trademark owners.
The UKIPO will automatically create a “comparable” United Kingdom trademark (UKTM) for every registered EUTM on 1 January 2021.
Comparable UKTMs will
Owners of EUTMs will not
Where the original right is an EU designation of an International Registration (IR), the comparable UKTM will be a freestanding UKTM and will not be a UK designation of the IR.
The registration number of the comparable UKTM will be the last eight digits of the original EUTM registration number with the prefix UK009 (where the original right is a EUTM) or UK008 (where the original right is an EU designation of an IR).
The comparable UKTM will also retain the renewal date of the original EUTM; however, a separate renewal fee will need to be paid to the UKIPO where it falls due from 1 January 2021 (even if the original EUTM was renewed at the EUIPO prior to 31 December 2020). Where the comparable UKTM is derived from an EU designation of an IR, it will no longer be part of the World Intellectual Property Organization (WIPO) system and renewals must be undertaken at the UKIPO.
Where an EUTM application is still pending on 1 January 2021, owners will have until 30 September 2021 to apply to register a comparable UKTM.
The application will
The application must
Where an EUTM is subject to ongoing cancellation proceedings (revocation or invalidity) at the end of the transition period and is subsequently cancelled, the outcome shall be applied to the corresponding comparable UKTM.
This means that where an EUTM is subject to cancellation proceedings at the end of the transition period and is subsequently cancelled, whether wholly or partially, the UK comparable trademark will also be cancelled to the same extent—without the need to bring a new cancellation action before the UKIPO. However, if the grounds for cancelling the EUTM do not apply in the United Kingdom, the owner of the comparable UKTM may file a derogation at the UKIPO requesting that the comparable UKTM not be cancelled.
There is no requirement for owners to appoint a UK representative for the comparable UKTM; however, we suggest owners do so to ensure effective portfolio management.
On request, we will record Morgan Lewis as UK representative and add comparable UKTMs to our docketing system. Please reach out to your usual Morgan Lewis contact or the contacts below if we can assist in this regard.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact any of the following Morgan Lewis lawyers:
Rachelle A. Dubow
Carla B. Oakley