On 1st January 2021, owners of registered EU trade marks (EUTMs) and Community Designs (RCDs) will automatically obtain comparable UK rights. The new UK rights will have the same details as the EU rights from which they derive including priority, filing, grant, UK seniority, renewal dates and registered owner and address. Pending EUTMs and RCDs will need to be refiled in the UK before 30th September 2021, if UK protection is desired. The UKIPO will not inform you about the new comparable rights, nor notify you of the re-filing deadline.
While it is currently not a legal requirement to appoint a UK representative it is nevertheless recommended that you do so. The UKIPO is creating over 2 million new comparable trade marks and designs on 1st January, an unprecedented feat, and it remains unclear how the Office will communicate with owners (or non-UK representatives), especially during a pandemic which has interrupted normal communications by post. Email addresses will not be imported from the EUIPO register. As a result there is a real risk that important communications such as renewal reminders and opposition or cancellation notices will be missed.
From 1st January 2021, a UK address for service will in any case be required in order to file any new UK applications for trade marks or designs (not based on EU rights). The same is true for launching new contentious proceedings.
If you haven’t already done so we advise that you appoint a UK representative now who can look after your UK rights, monitor them for changes in status, and assist you with timely refiling of pending EUTMs and RCDs next year.
If you have any questions, please contact our Trade Mark team who can assist with representation.
