As from the end of 2020, trade marks registered in the European Union will no longer be protected in the United Kingdom. The UK will be establishing a comparable trade mark for all holders of existing registered EU trade marks. There will be no changes to protection in other EU member states, such as France or Germany, and British businesses and individuals will still be able to apply for EU trade marks.
Receiving a comparable UK trade mark.
The UK Intellectual Property Office will create for every registered European trade mark a comparable trade mark which will be recorded on the UK trade mark register. It will have the same legal status as national UK trade marks and will keep the original European filing dates.
This process will happen automatically. There will be no fees payable.
The national trade mark numbers will be based on the existing EU trade mark numbers proceeded by UK009. So, for example, an EU trade mark with the number EM000000977 will become UK009000000977
Pending European trade mark applications
Pending trade mark applications in Europe – including those in the opposition phase – will not be automatically converted into a pending British registration. However, it will be possible to apply to register a national trade mark in the UK up to 30 September 2021 based on the original EU mark for the same goods and services. The applicants will have to pay the national fees.
Opting Out
It will be possible to “opt-out” of the creation of the national UK trade mark. This needs to be done by filing a request with the UK Intellectual Property Office after 1 January 2021.
Trade Mark Renewals
In the future, it will be necessary to pay for renewing BOTH the UK and the EU trade marks separately. We shall continue to send renewal reminders for both the existing EU trade marks and the new UK rights to our clients in good time.
Please take care when responding to any renewal letters that these come from a recognized source. A number of trade mark holders have received letters from companies with names similar to trade mark offices offering to renew their trade marks.
Representation
The UK trade mark office will currently allow the existing European Trade Mark Attorneys to continue to be listed as the representatives for the new British trade mark. Our Munich and Paris offices will continue to be listed as the addresses for service and there will be no need to select a new representative.
This may change in the future and we shall be taking measures to ensure that we can continue to represent our clients in the UK. Feel free to contact us if you have any questions. Contact details are here.
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