Insights UK Trade Mark Portfolio Management Considerations after Brexit

The UK’s Brexit transition period ended on 31 December 2020. A number of expected changes to UK trade mark law have now come into force, with consequential impacts on the effect of EU trade marks in the UK.

The UKIPO has copied onto the UK trade mark register all EUTMs and International registrations registered in the EU as at 11pm on 31 December 2020. These are called ‘comparable’ trade marks in the legislation.

All EUTM applications or pending International designations for the EU as at that date have not been copied onto the UK register. There is now a special ‘Brexit priority’ period of 9 months (to the end of September 2021) in which owners of such pending EUTMs and EU designations can re-file new applications in the UK and claim the same filing date and details.

The rules on addresses for service in the UKIPO have also changed.

  • All new UK TM applications will need a UK address for service, including applications claiming the ‘Brexit priority’ period.
  • The address for service on the EU register for all relevant registered EUTMs and EU designations has been copied onto the UK register for all comparable rights.
  • It is not necessary to immediately appoint a UK address for service for pre-existing UK or new UK comparables.
  • Special rules apply for pre-existing applications and proceedings in the UKIPO.
  • All official correspondence and notifications will be sent by the UKIPO (and third parties) to the address for service on the UKIPO register.

It will not be necessary to update the address for service for routine maintenance, such as renewals, recordal of licences, or for requesting routine corrections.

Where new actions are commenced against pre-existing UK TMs, or new comparable rights derived from EU designations, a new UK address for service will be required if there is not one already. Where new actions are commenced against new comparable rights derived from EUTM registrations, a new UK address for service will not be required for 3 years. New actions means any action against or relating to the registration, such as revocation or invalidity proceedings.

However, only UK laws apply to UK registrations and so only professionals with UK qualifications can advise on UK trade mark matters and many businesses may prefer consolidated management of their UK TM portfolio by a UK firm for that reason.

For a quick reference summary guide to these changes, click here.

For any questions about other issues, please get in touch.