EU trade mark protection and comparable UK trade marks from 1 January 2021

Guide

Last updated 4 January 2021

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From the 1 January 2021, EUTMs no longer protect trade marks in the UK. Under the Withdrawal Agreement Act, on the 1 January 2021, the UK Intellectual Property Office (IPO) has created a comparable UK trade mark for all right holders with an existing EU trade mark.

Existing EUTMs still protect trade marks in EU member states. UK businesses can still apply the EU Intellectual Property Office for an EUTM.

There are no changes to UK-registered trade marks as a result of the UK leaving the EU.

If you had a pending EUTM application, you'll be able to apply to register the same trade mark as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021. You'll keep the earlier filing date of the pending EUTM.

Receiving a comparable UK trade mark

On 1 January 2021, IPO has created a comparable UK trademark for every registered EU trade mark (EUTM). Each of these UK rights:

  • is recorded on the UK trade mark register
  • has the same legal status as if you had applied for and registered it under UK law
  • keeps the original EUTM filing date
  • keeps the original priority or UK seniority dates
  • is  a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM

You do not:

  • need to pay for your equivalent or comparable UK trade mark - and there will be as little administration involved as possible
  • receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK

Registering a pending EUTM application as a UK trade mark

IPO has only created a comparable UK trade mark for EUTMs registered before 1 January 2021.

If you have an EUTM application that was still pending on 1 January 2021, you'll be able to:

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

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

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

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

You must submit your application within nine months after the end of the transition period. IPO will then:

  • treat the pending EUTM application as a UK application
  • examine it under UK law

The usual UK fees of £170 will apply, including one class of goods or services, and an extra £50 for each additional class.

You can fill in the paper forms if you want to apply by post. This costs £200 for one class plus £50 for each additional class.

You may be intending to file a UK trade mark application that does not correspond to a pending EUTM application in the nine months after the end of the transition period. If so, you should note that someone could file a UK application after yours and claim the earlier date of a corresponding EUTM application that was pending on 1 January 2021. Where this happens, the later-filed UK application will take precedence.

Before applying for a UK trade mark in the nine months after the end of the transition period, use the EU Trade Mark Register to check whether any EUTM applications:

  • were pending on 1 January 2021
  • hold a filing or priority date earlier than your own

During the examination process IPO also conduct a search for geographical indications (GI), to ensure your trade mark application does not conflict with these prior rights. Therefore, you should also be aware that the above mentioned corresponding period could also apply to any geographical indications that are pending at the end of the transition period. This would apply where the GI producer applies to the UK GI scheme (administered by Defra) within 9 months of the transition period, and claims the application date of their earlier EU GI application.

If you are thinking of filing for a UK trade mark application, then you may want to search the EU GI register as well as the EUTM register to check for geographical indications pending on 1 January 2021 that could conflict with your trade mark.

Priority and seniority claims

A priority date claimed under the Paris Convention that has been recorded against the corresponding EUTM is inherited by the comparable UK trade mark.

Accordingly, where proceedings involve a comparable UK trade mark with a priority claim inherited from the corresponding EUTM, the date of that priority claim will have effect.

Seniority is a concept which derives from EU legislation and has applied only to EUTMs and UK trade marks that have been converted from EUTMs. From 1 January 2021, it also applies to the UK comparable trade marks.

Seniority allows a business to consolidate its multiple national registered trade marks into one single EUTM by retaining the 'senior' dates of those national rights and recording them against the EUTM.

Where the national marks are surrendered or allowed to lapse, the owner is deemed to have the same rights as they would have if the earlier national mark(s) had continued to be registered.

Seniority can determine the effective date of an existing EUTM. Seniority claims based on earlier UK or International (UK) trade marks will be recognised.

The new law means that any seniority claim based on an earlier UK or International (UK) trade mark that has been recorded against an EUTM is retained by the comparable UK trade mark.

Automatic retention of existing priority and seniority dates

The retention of existing priority and seniority dates in comparable UK trade marks is automatic.

As the holder of an EU right, you do not have to inform IPO of any earlier effective dates.

This is because filing, priority and seniority information is automatically transferred onto the new UK right.

The UK application process provides you with a way of recording priority and seniority dates for applications corresponding to pending EUTM applications filed within nine months after the end of the transition period.

Pending cancellation actions

Registered trade marks can be challenged by third parties under the grounds of revocation and invalidity (collectively known as 'cancellations'). If these actions succeed, then the right is removed fully or partially from the register.

At the end of the transition period, IPO has created UK comparable trade marks for all EU trade marks registered at 31 December 2020. This includes EU trade marks that are subject to cancellation proceedings.

The Withdrawal Agreement requires that where an EU trade mark is subject to ongoing cancellation proceedings at the end of the transition period, and is subsequently cancelled, the outcome shall be applied to the corresponding UK comparable right.

This means that if you own an EU trade mark that is subject to cancellation proceedings at the end of the transition period and that right is subsequently cancelled, whether wholly or partially, your UK comparable trade mark will also be cancelled to the same extent.

If you are a party that has succeeded in cancelling an EU trade mark and this action was ongoing at the end of the transition period, the cancellation will be applied to the UK comparable trade mark, without the need for you to bring a new cancellation action before the UK IPO.

There is an exception where the grounds for cancelling the EU trade mark would not apply in the UK. In this case the UK right will not be cancelled. This is referred to as a derogation.

When an EU trade mark is subject to ongoing cancellation proceedings, IPO will record this on the comparable trade mark when it is created. When a final decision in the proceedings against the EU trade mark is reached, meaning that no further appeals are possible, a cancellation notice may be sent to IPO by any person. IPO will also initiate the cancellation of a comparable trade mark or direct another party do to so if IPO become aware that the corresponding EUTM has been cancelled.

If you are the owner of the comparable trade mark sending IPO a cancellation notice, and you wish to claim the derogation, you must send the derogation notice with the cancellation notice.

If a third party sends IPO a cancellation notice, they will send this to the owner of the comparable trade mark. If they believe that the cancellation should not apply in the UK, they must file a derogation notice within a period of one month following receipt of the cancellation notice. If IPO become aware that an EU right is cancelled, then IPO will write to the owner of the comparable right and give them the same notice to file a derogation.

The IPO Tribunal will then decide whether or not the trade mark should be cancelled in the UK.

Some examples of how a derogation is likely to succeed or not succeed are set out below:

  • derogation is likely to succeed where the cancellation of an EUTM was based on an earlier mark or other right that would not have applied in the UK eg national marks of countries other than the UK

  • derogation is unlikely to succeed where the cancellation of an EUTM was based on a UK earlier mark or other earlier right that covers the UK

  • derogation is unlikely to succeed where the EUTM's cancellation decision is based upon absolute grounds because of its meaning in English

  • derogation is unlikely to succeed on the basis that the mark is open to objection in all states of the EU (e.g. where the mark consists of a three-dimensional mark)

If a cancellation action against an EUTM fails at EU level, you can contact the IPO to let them know this. They will then remove the indication that your right has an ongoing action against it.

Use and reputation

For a national trade mark, an uninterrupted period of 5 years' non-use in the UK can render a mark vulnerable to challenge.

Applying this approach to comparable UK trade marks created on 1 January 2021, many of which will correspond to EUTMs that have never been used in the UK, would not provide enough protection for those new comparable rights. It would likely lead to outcomes that are unintended and unjust.

To address this, the new law ensures that any use of the mark in the EU made before 1 January 2021, whether inside or outside the UK, counts as use of the comparable UK right.

Where the 5-year period includes time before 1 January 2021, use in the EU will be considered. Where the period includes any time after 1 January 2021, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account.

In all cases, the 5-year period of suspended use is activated by last use of the corresponding EUTM or comparable trade mark. Where that use was of the corresponding EUTM, and it was made in the EU before 1 January 2021 (whether inside or outside of the UK), it will count for the purposes of the comparable trade mark.

Assessment of reputation

In relation to the consideration of any time before 1 January 2021, reputation of the corresponding EU trade mark, in the EU but not necessarily in the UK, will be considered for the purposes of the comparable UK right.

Where oppositions filed after 1 January 2021 are based on a comparable UK trade mark, the same approach will apply to conditions of use.

For any part of the 5-year period that falls before 1 January 2021, use of the corresponding EU trade mark in the EU will be considered, regardless of whether it was inside or outside of the UK.

Further changes to UK trade mark law
The Withdrawal Agreement covers the above-mentioned aspects for EUTMs, there are other changes that must be made to UK legislation on trade marks for the effective administration and implementation of the comparable rights. These are set out below.

In addition to this, amendments to the Trade Marks Act 1994 (TMA), and secondary legislation in the form of the Trade Marks Rules 2008, and amending and standalone regulations are required to reflect that the UK is, after 1 January 2021, no longer part of the EU trade mark system.

Opting out of the comparable UK trade mark

If you do not wish to hold the new right, you may opt out of holding it. If you opt out, the comparable right will be treated as if it had never been applied for or registered under UK law.

You may not exercise an opt-out right if you have used the comparable UK right in the UK. This also applies if you have:

  • assigned or licensed or entered into an agreement in relation to it
  • you have initiated litigation based upon the comparable UK right

Requesting an opt-out

Opt-out requests can only be submitted after 1 January 2021. Any requests made before then were not valid.

The notice template that you must use to submit your request is available on GOV.UK.

You will need to submit a notice to IPO providing the EUTM number, along with details of anyone with an interest in the EUTM.

By law, notice to interested third parties must be given for opt-out to have effect. You must confirm that such action has been taken.

If IPO determines that an opt-out right has been exercised in circumstances where it was not permitted, the comparable UK trade mark may be reinstated if the equivalent or comparable UK trade mark was removed from the register.

Registration numbers for equivalent and comparable UK trade marks

IPO provides a means for identifying comparable UK rights and distinguishing them from existing UK trade marks.

The number allocated to the comparable mark is the last 8 digits of the EUTM prefixed with UK009.

The following examples demonstrate how comparable UK trade marks are codified:

Existing EU trade mark Comparable UK trade mark
000000977 UK00900000977
000025197 UK00900025197
000340513 UK00900340513
017867542 UK00917867542

By retaining the EUTM number, IPO aim to keep the administrative process to a minimum.

Renewing trade marks

Once a comparable UK trade mark is created, a separate renewal fee will apply for each comparable UK trade mark and the existing EUTM.

The fees will need to be paid separately to IPO and the EUIPO.

For the purposes of future renewal, the comparable UK right will retain the existing renewal date of the corresponding EUTM.

Under existing law, IPO send a renewal reminder to any UK trade mark owner whose right is due to expire, and they do so six months ahead of the expiry date.

This practice will be retained for all comparable UK trade marks with renewal dates that fall more than six months after 1 January 2021. However, where the comparable UK trade mark expires in the six months after 1 January 2021, IPO will adopt a new process.

IPO are also changing the law to accommodate EUTMs that have expired in the six months before 1 January 2021, and are still in their late renewal period when the UK leaves the EU.

Trade marks that expire six months after 1 January 2021

Where the comparable UK trade mark expires within six months after 1 January 2021, there will not be enough time for IPO to issue the standard renewal reminder in advance of the expiry date.

A renewal reminder will be sent to you on the actual date of expiry, or as soon as practicable after that date.

The reminder will inform you that the comparable UK trade mark has expired. You will be given another six months from the date of the letter to renew the right.

This procedure equates to renewal of the right after its expiry date has passed.

The 'late' renewal of comparable UK trade marks which have expired within six months after 1 January 2021 will not be subject to an additional renewal fee.

You will only have to pay the standard UK renewal fee calculated by reference to the number of classes retained in the comparable UK trade mark.

Where the comparable UK right is not renewed, it will be removed from the register but may be restored at a later date in accordance with existing UK law.

Where an EUTM renewal date falls after 1 January 2021, early payment of the renewal fee at EUIPO, before 1 January 2021, will have no effect in respect of the comparable UK trade mark.

A comparable UK trade mark with a 10-year renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action and fee.

This is regardless of whether a renewal action was taken on the corresponding EUTM before 1 January 2021.

Trade marks that expire before 1 January 2021

IPO has created comparable UK trade marks from any EUTM which:

  • has expired in the six months prior to 1 January 2021
  • has not been subject to a late renewal action at EUIPO is still within its 6-month late renewal period

These UK rights hold an 'expired' status, and their continued effect in the UK will depend on late renewal of the corresponding EUTM at EUIPO.

Where the corresponding EUTM is subject to late renewal, the renewal will also have effect on the expired comparable UK trade mark.

This means that the comparable UK trade mark will be automatically renewed as a result of the EUTM's late renewal.

In this scenario, you will not have to pay any renewal fees in respect of first renewal of the comparable UK trade mark.

If the expired EUTM is not late-renewed at EUIPO, the comparable UK mark (which was created on 1 January 2021 in the UK) will be removed from the UK register on expiry of the corresponding EUTM's late renewal period, but with effect from 1 January 2021.

Certification and collective marks

As with conventional EU trade marks, IPO has created comparable UK rights from all EU certification and collective marks registered at EUIPO before 1 January 2021.

Certification and collective marks perform a different function to conventional trade marks. Certification marks provide a guarantee that goods or services bearing the mark meet a defined standard or possess a particular characteristic.

Collective marks indicate that the goods or services originate from members of a trade association, rather than just one trader.

The registration of both certification and collective marks is subject to the registering authority's approval of regulations governing how the marks are used.

These regulations must be available for third parties to view and, in the case of many EU certification and collective marks, they will be in languages other than English.

IPO has not automatically imported onto the trade mark register the regulations governing use of the EU mark at the point of creating the comparable UK right.

IPO has not requested that the holder provide an English translation immediately after 1 January 2021.

IPO will contact you if you own a comparable UK certification or collective mark when they need to inspect the regulations (for example, where the mark becomes subject to proceedings). Where they are in a language other than English, they will request a translated version of the regulations. Failure to provide translated regulations will result in the loss of the right.

Licences, security interests and assignments

Subject to any specific conditions it may require, the new law confirms that a licence or security interest recorded against an EUTM continues to have legal effect in the UK.

On 1 January 2021, you may have held an EUTM which is subject to a licence or security interest. This licence or security interest may authorise actions in the UK which would otherwise infringe the EUTM.

Any licence or security interest that refers to an EUTM and authorises acts in the UK is treated as if it applies to the comparable UK trade mark.

It is important that you notify any licencees of the new right, and check that the creation of the new right does not breach any agreement.

UK law does not require that transactions are registered per se. Licences and securities registered at IPO within six months of the transaction provide some protections which do not apply to unregistered transactions.

These protections help people with an interest in the trade mark and those seeking full relief for infringement. The protections are largely dependent upon proof that an application to register a transaction has been made.

IPO recognise that applications to register licenses and security interests relating to comparable trade marks cannot be submitted before those rights are created.

The period for recording a transaction on the UK register will be extended to 12 months from 1 January 2021. This is in respect of the UK comparable trade mark for a license or security interest already registered in the EUTM register.

Where an EUTM has been the subject of an assignment before 1 January 2021 that has not been recorded in the EUTM register, the comparable trade mark will be granted to the assignor.

The assignor or the assignee will have the right after 1 January 2021 to apply for the registration of the comparable trade mark in the name of the assignee.

Jurisdictional arrangements and pending proceedings

Since the UK is no longer be under the jurisdiction of the EU legal system after 1 January 2021, any EU-wide injunctions will not apply to the comparable UK right.

This applies to instances where you are a defendant in IPO proceedings based on an EUTM. It also applies if you are the holder of an EUTM and are involved in proceedings to oppose or cancel a UK trade mark.

These proceedings will continue towards resolution on the basis of the law as it stood before 1 January 2021.

Existing injunctions

Court injunctions can prohibit actions which would otherwise give rise to the infringement of a registered trade mark.

Where an injunction in place at 1 January 2021 prohibits actions in the UK which would infringe an existing EUTM, the terms of that injunction will be treated as if they also apply to the comparable UK trade mark.

EUTM registrations and applications reinstated after 1 January 2021

Under the EU Trade Mark Regulation, a right that has been struck from the EU register because of the applicant or owner's failure to meet a deadline may be reinstated later and treated as if it had continuous legal effect.

Comparable UK trade marks have only been created from EUTMs which are actively registered immediately before 1 January 2021. EU rights not registered on that date but which are subject to reinstatement would not have automatically resulted in the grant of comparable UK rights.

The new law provides holders and applicants of reinstated EU rights with the means to preserve those rights in the UK.

Where registered EU rights are reinstated after 1 January 2021, and the proprietor notifies IPO of this, IPO has created a comparable UK trade mark.

Reinstatement of EU rights can only occur where application is made to the EUIPO within one year of the missed deadline.

If you hold a registered EUTM which was reinstated after 1 January 2021, and you have not been granted a comparable UK trade mark, you should inform IPO within six months. Contact information@ipo.gov.uk.

If you have a pending EUTM application which was reinstated after 1 January 2021 and it holds a filing date before 1 January 2021, you may submit a UK trade mark application claiming the earlier EU filing or priority date.

You can do this within nine months beginning with the date on which the corresponding EU trade mark application was restored.


First published 25 November 2020