New York Trademark Attorney Blog
As most already know, the United Kingdom (UK) left the European Union (EU) on January 31, 2020. The UK remained within the EU’s structure for trademarks during this transition period. The transition period will end on December 31, 2020. New UK “comparable rights” will be created. After the transition period, all EU trademark rights holders will be granted comparable rights in the UK. These comparable rights will also exist for marks that designated the EU in an International Registration through the Madrid Protocol. For more information on International Registrations, see our webpage entitled, International Trademark Filings and our webpage entitled, Madrid Protocol Trademark Filings. The UK Trademark Office will not require any additional examination of the trademark registration, nor will there be any additional fees due.
The comparable rights in the UK will maintain the same filing date, priority date and renewal dates as the EU registration. The trademark registration number will be the eight-digit number of the EU registration preceded by the letters UK. The UK Intellectual Property Office requires that a trademark applicant maintain a UK address for service. However, there will be certain exceptions made for EU registered trademarks for a limited time period which will enable right holders ample time to provide the UK Trademark Office with this information.
Please note that any trademark applications pending with the EU at the end of the transition period will not be allowed comparable rights. Instead, there will be a grace period of nine months where the EU trademark application will be given an opportunity to be re-filed in the UK. If the applicant takes advantage of the nine month “grace period” and re-files in the UK, then it can maintain the same priority filing date as the EU application. However, The UK Trademark Office will require a new period for opposition of the application filed during the grace period.
Regarding renewals, trademark rights holders will be required to independently renew the EU registration with the European Union Intellectual Property Office and the new UK registration will need to be renewed with the United Kingdom Intellectual Property Office. After January 1, 2021, any applicant seeking trademark rights in both the UK and the EU, will need to file trademark applications with both Intellectual Property Offices.
It is advisable to update all trademark records and renewal deadlines to ensure proper docketing of the newly created UK rights. If you are an EU trademark rights holder and do not wish to hold a separate UK registration, you will have an opportunity to opt out. Please keep in mind that a trademark owner will be prevented from opting out if the trademark owner already used the trademark in the UK and if the trademark was either assigned or licensed or if litigation had already been initiated wherein the mark with the comparable rights is the subject matter of the litigation.
As a summary for trademark rights holders, there is no action a rights holder must take to be granted duplicate registration rights from one’s EU registration to the newly created UK trademark registration. It is recommended that trademark owners update their records to reflect the new registration number(s) from the UK Intellectual Property Rights Office, update the renewal dates for the UK Intellectual Property Rights Office, and provide the UK Trademark Office with a UK address for service. If you have any questions about the transition period, questions concerning the UK comparable rights, or any trademark related question, please feel free to contact our office.