From Percy Pigs to postage, Brexit continues to pose challenges for UK businesses who trade with Europe, at home and abroad. One lesser-known area of business law where that impact continues to be felt is intellectual property.
From 1 January 2021, EU trade marks ceased to have protection in the UK. As part of the EU withdrawal process, owners of registered EU trade marks (which were granted before 1 January 2021) will have had comparable UK trade marks automatically generated by the UK Intellectual Property Office (UKIPO).
Comparable UK trade marks will have the same filing, priority, seniority and renewal dates as their EU counterparts, as well as identical details of the registered owner and address. It is important to note that these comparable marks are their own independent UK trade marks which must be renewed, licensed and assigned separately from their EU counterparts. There are no fees payable for the automatically generated comparable marks, but standard UKIPO renewal fees apply.
For any EU trade mark applications that were pending at the end of the transition period, you can apply for a comparable UK trade mark to be created before 30 September 2021, keeping the earlier filing date. The usual UKIPO filing fees apply in this situation.
The named representative for the comparable marks will also be transferred over. An EEA representative can remain on the register for the next three years. However, after this three-year period, any appointed representative must be based in the UK.
Our intellectual property partner Lindsay Gledhill comments: ‘We recommend that you appoint a UK representative for any comparable marks, as these marks are governed by UK law. Representatives at the UKIPO for any new trade mark applications begun after 1 January 2021 must be based in the UK.
‘The important takeaway is that if you’re looking to protect your business in the UK and EU, you will now need to file separately in both jurisdictions. Our team at Harper James Solicitors continues to offer both UK and EU trademark services.’