Given the recent (and ongoing) business upheaval caused by COVID-19, many businesses can be forgiven for failing to focus on the fact that Brexit finally took place with the UK “leaving” the EU on 31 January 2020 with the practical “Exit Day” to occur on 31 December 2020, after the transition period.
In order to ensure that your trade mark portfolio is in good shape, there are a number of points/actions that you should be considering now:
- Existing European Union Trade Marks (EUTM registrations) – each registration will be “cloned” so that after Exit Day there will be a separate UK trade mark registration together with an EUTM for the remaining EU countries; the good news is that no registration fees or action is necessary for any cloned UK trade marks and the renewal date for the UK trade mark will be the same as for the remaining EUTM. For any EUTMs which are currently in the renewal period with fees payable, it will be sensible to renew now to avoid paying separate (and higher) renewal fees on both the EUTM and the UK trade mark after Exit Day;
- Pending EUTM applications – for any applications which have not proceeded to registration before Exit Day, trade mark applicants will have a 9-month period (until 31 August 2021) to file a UK trade mark application based on the EUTM application and will have to pay the normal UK application fee; this will allow applicants to claim the same filing date and priority date for a UK mark as applies to the EU application;
- New EUTM applications – unfortunately, as there is now no longer enough time for such applications to be registered before Exit Day, applicants will need to file in both the UK and the EU; moreover, it is generally considered a good idea to file directly in the UK as opposed to relying on a clone application right (see above) as the fees are the same and this should avoid delays in the processing of new applications for any clone applications filed after Exit Day. For any Madrid Protocol applications, it will now be necessary to designate both the EU and the UK;
- Existing EU designations of Madrid Protocol applications – the UK right will be cloned out into a UK national registration but no representative is appointed – registrants can retain UK professionals to appoint themselves as the agent for the UK clone application; the relevant UK agent will need to fax the appointment request to the UK Intellectual Property Office;
- Is a UK clone application necessary at all? In the lead-up to Exit Day, you should be considering whether or not such a clone registration is needed – if you already have a national UK registration or UK designation of a Madrid registration, this will not be needed.