EU Exit: Claiming an EU filing date on UK trade marks and design cases

News article

Customers with EU trade marks and design applications that were pending on 1 January 2021 can file for a UK right and claim the earlier filing date - this service is only available until 30 September 2021

The Intellectual Property Office (IPO) is encouraging holders of such rights to file these applications with them as soon as possible. An early application will help with early examination and allow time for refiling if necessary, as the deadline approaches.

Criteria for filing
Under Article 59 of the Withdrawal Agreement between the United Kingdom and the European Union, customers can:

  • apply to register the same right as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021
  • claim the earlier filing date of the pending right
  • claim any valid international priority they had on the pending EU application, along with any UK seniority claims recorded against it

Application process
If you apply to register a pending right as a UK trade mark, the application must:

  • relate to the same trade mark that was the subject of the EU right application
  • seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application

If the details of the application do not match those of the corresponding EU application, you will not be able to claim the earlier EU filing or priority dates.

Customers must submit the application by 30 September 2021.

The IPO will then treat the pending EU application as a UK application and examine it under UK law. The usual UK fees for trade marks and designs apply.

Please note, this does not affect claims to priority under the Paris Convention. The IPO will continue to accept valid claims under the Paris Convention going forward.

First published 22 June 2021