As widely publicised, following Brexit, EU Trade Mark applications or Community Registered Design applications pending as of 31December 2020, no longer cover the UK but can be cloned into UK trade marks or designs if steps are taken by 30 September 2021.
EU Trade Marks and Community Designs that were registered as of 31 December 2021 were automatically cloned into corresponding UK rights (“comparable UK Trade Marks and RE-registered Designs”) with no action required by the proprietor. However, EU applications pending as of that date can only be cloned by filing an application at the UK Intellectual Property Office. If successful, such application then provides protection for the trade mark or design in the UK as of the filing/priority date of the prior EU application.
The UK Intellectual Property Office allows applications for comparable UK registrations only until 30 September 2021. After this date, UK applications cannot benefit from an earlier pre-Brexit EU filing/date, potentially meaning that third parties who filed their UK applications in the intervening period could potentially claim the earlier dominant right.
If you have an EU application which was pending on 31 December 2021 and you would like to extend its protection to the UK, it is highly recommended that you do so by the 30 September 2021 deadline. Our trade mark and design specialists would be glad to assist you with an application for a comparable UK trade mark. Please contact us at [email protected] or [email protected].