26 February 2019
New regime for registration and designation of comparable UK trade marks post-Brexit
The UK Intellectual Property Office (IPO) has announced a numbering system for European Union trade marks (EUTMs) which are to be cloned into corresponding UK trade mark registrations post-Brexit.
The new registrations will carry the prefix 'UK009' followed by the last eight digits of the existing EUTM numbers. For example:
|Existing EU trade mark||Comparable UK trade mark|
The prefix designation will distinguish the new comparable rights from trade marks already on the UK register. See more examples of numbering for comparable UK trade marks.
Cloned UK trade marks
After Brexit, EUTMs will cease to be have effect in the UK. To secure the existing rights, the IPO will clone registered EUTMs and create comparable UK rights at exit date, be that 29 March 2019 if the UK exits the EU without a deal, or 31 December 2020 if a deal is agreed.
These 'cloned' rights will be recorded on the UK register and:
- will be created automatically, without re-examination and free of charge
- will have the UK009 prefix added to indicate it’s a cloned registration
- will be subject to renewal in the UK via the IPO
- will retain the filing dates recorded against the corresponding EUTM
- will inherit any priority and/or seniority dates
- can form the basis for proceedings in the UK
- can be assigned and licensed separately from the original EU right
The IPO will notify right holders that a new UK right has been granted by publishing a notification and guidance on their website. If a right holder of an existing EUTM does not wish to receive a new comparable registration, they may be able to opt-out of the process.
Existing EUTMs will continue to be valid in the remaining 27 EU member states.
Pending EUTM applications
If you have a pending EU trade mark application at exit date, you will not be automatically granted an equivalent UK application. Instead, you will have nine months to file an equivalent UK application, which will benefit from the same filing/priority/seniority date as the EUTM from which it originated. However, you will have to pay for this new UK application.
Your pending EU application will continue as normal and no refiling is required. If granted, the right will only apply to the remaining 27 EU member states.
For more information, see the government's technical notice on trade marks and EU exit.