Brexit - Impact On TM Flashcards
What date was the UK officially out of the EU?
1 January 2021
What happened on 1st January 2021 for EUTM’s in relation to protection in the UK?
UKIPO created a comparable (clone) UK TM for every registered EUTM
each of these UK Rights
- have the same legal status as if you had applied and registered it under UK law
- retained the same details e.g original EUTM filing date
- keep original priority or UK seniority date
- fully independent TM’s that can be challenged, assigned, licensed or renewed separately from EUTM
- will NOT receive UK registration certificate
- opt-out was possible, not very common
How can you identify clone UK registrations?
Registration number Prefixed UK009
What happened to preexisting International Registrations with an EUTM designation after Brexit?
All existing EU designations in IR’s that were protected also received cloned comparable UK registrations (these were national registrations / NOT UK designation)
This meant that if client wanted to record title changes for the IR and UK would have to do separately, e,g at WIPO and again at UKIPO
Concept of replacement could help (i.e if clients filed a subsequent designation of the UK to IR then replace national filing with designation)
How to identify a UK clone registration from an IR?
Registration number prefixed UK008
How to file replacement of national UK registration in favor of IR designating UK?
Form TM28
What happened to pending EUTM applications on 1st January 2021?
If you had a pending EUTM on 1 January 2021 then a comparable UK right was not created automatically, BUT
you had 9 months, until 30th September 2021, to file a UK clone application claiming priority date of EUTM (i,e keeping sane effective date of EU filing or priority date)
Filed on regular TM3
Filing date = date when actually filed (i.e in that 9 month period), but claims priority from EUTM
Renewal runs from filing date of UK application
What happened after 1 January 2021 in terms of representation?
UK attorneys lost their right of representation before the EUIPO (now need to appoint a professional representative in the EEA)
also UK requirement for non-UK applicants to have an Address for Service in UK, CI or Gibraltar
How did renewals work for EUTM’s in relation to Brexit?
If the EUTM was due for renewal up to 31st December 2020, if it was renewed then the UK comparable registration was renewed (even if grace period was used and renewal was not attended to until 2021)
If an EUTM was due for renewal after 31st December 2020 then, even if the EUTM was renewed early before then, the UK clone still had to be renewed
Renewal date for a subsequent designation on the IR runs from filing date of that subsequent designation
What happened with assignments in relation to EUTM’s / UK clones after Brexit?
If assignments were PENDING and not recorded on the 1st January 2021 at the EUIPO, you would also have to file a TM16 at the UKIPO to cover the UK clone
If assignment documents dated 31st December 2020 or before containing EUTM, also effective to assign UK clones too
Assignment documents dated after 31st December 2020 containing EUTM’s not effective to assign UK clones - would have to assign separately
What happened in regards to pending cancellations with EUTM’s/clone registrations?
If an EUTM was subject to ongoing cancellation proceedings on 1st January 2021, if that EUTM was subsequently cancelled, the UK clone would be cancelled too (partially or wholly)
However, could file a derogation request for UK clone not to be cancelled if grounds do not apply (e.g based on an earlier mark in France)
UKIPO will write to owner to provide opportunity for derogation to be filed
Request has to be made in writing within 1 month with supporting grounds (then UKIPO will issue decision)
How do oppositions work for EUTM’s/UK clones?
If you are opposing a TM registration based on prior rights
If opposing application filed before 31st December 2020 the earlier rights must be EUTM’s or designations, not UK clones
If opposing application filed after 31st December 2020, the earlier rights must be UK clones
As part of TM7 have to state whether earlier rights have been registered for more than 5 years/if marks have been used in relevant 5 year period
How does use work for UK clones? (I.e use in EUTM)
Use up to 31st December 2020 - allowed
Use after 1st January 2021 - not allowed
To protect UK TM clone from revocation use needs to be in UK after 31st December
