February 16, 2021
Authored and Edited by Fionnuala P. Richardson; Clare A. Cornell
On the 1st January 2021, more than two million EU registered trade marks were cloned onto the UK Register to ensure their continued protection in the UK. On the same day, the EU Trade Marks (EUTMs) and International Trade Mark Registrations designating the EU (IREUs) on which they were based on ceased to have an effect in the UK. So, what are the key considerations for trade mark owners now that Brexit has been realised?
Let’s start by clarifying what has remained the same. At the EUIPO, English is still one of the accepted languages for proceedings and there is still no requirement of nationality or establishment for filing an EUTM application. Finally, it is still possible to claim priority of a UK application at the EUIPO and vice versa.
However, consideration should be given to the following:
The UK IPO will also accept notification in instances where the EUIPO has cancelled a registration and the UK rights will remain on the register. Such notice can be filed by anyone and will result in the UK IPO contacting the proprietor or their representative to provided them with the opportunity to respond with a derogation request.
Invalidity applications at the EUIPO still pending on 1 January 2021 that were based solely on UK rights will be dismissed and each party will be ordered to pay their own costs, and any procedures should be re-initiated in the UK. Decisions on whether a cancellation should apply will be decided by the IPO Tribunal.
Any assignment agreement concluded before 1st January 2020 against an EU right, but not recorded at the EUIPO will result in a cloned UK right in the name of the Assignor. The document assigning the EU right can be used to record an assignment of the cloned UK right at the UK IPO.
For further details, please refer to our previous blog post on Trade Marks in Post-Brexit World or feel free to get in touch with one of our IP practitioners based in our London Office.
Brexit, opposition, trademark cancellation, license agreement, European Union Trade Mark (EUTM), European Union Intellectual Property Office (EUIPO)
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