(information from the UK IPO)
Receiving a comparable UK trade mark
As of 1 January 2021, IPO will create a comparable UK trademark for every registered EU trade mark (EUTM). Each of these UK rights will:
- be recorded on the UK trade mark register
- have the same legal status as if you had applied for and registered it under UK law
- keep the original EUTM filing date
- keep the original priority or UK seniority dates
- be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM
You will 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
We will only create a comparable UK trade mark for EUTMs registered before 1 January 2021.
If you have an EUTM application that’s 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.
We 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 ile 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 we also conduct a search for geographical indications, 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.
