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Although the United Kingdom has officially left the European Union, EU trade mark applications pending on 31 December 2020 were allowed a grace period during which a corresponding UK application can be filed with the benefit of the same filing date as the EU trade mark. That grace period is now due to end very soon and the deadline for re-filing UK applications corresponding to such EU marks is 30 September 2021.

 

With just a few short weeks remaining until the deadline, Keltie is urging intellectual property holders to review their trade mark portfolio and make sure any EU marks that were pending on 31 December 2020 are re-filed in the UK, if they wish to claim rights starting from the filing date of the EU application. Of course, UK applications can be filed also later, but the right to claim priority from such EU marks will end on 30 September 2021.  

 

This only applies to EU trade mark applications or EU designations under the Madrid System which were pending or filed but not yet granted (for example, under opposition) on 31 December 2020. Any EU trade marks which had already been registered on 31 December 2020 were automatically cloned into UK trade marks and now enjoy protection in this jurisdiction.

Manuela Macchi, Chartered Trade Mark Attorney and a Partner at Keltie, is  encouraging any clients who had a pending EUTM applications on 31 December 2020 to get in touch as soon as possible to ensure the trade mark has protection in the UK after the upcoming deadline:

The importance of taking action before 30 September 2021, especially in the case of overseas companies who operate in the UK, cannot be overstated. 30 September is a very significant date for many of our clients and we want to make sure that clients can benefit from the filing date of their EUTM application. For EU marks under opposition, that can amount to several years of priority.”

“Protecting trade marks in the UK post-Brexit is a fairly straightforward process but all EU trade marks that were pending on 31 December 2020 must be re-filed in the UK before that deadline if the Applicant wants the benefit of the EU filing date”. 

 

According to guidance issued by the UK Intellectual Property Office (IPO), trade marks re-filed in the UK before the deadline will be able to claim the filing date of the previous EU-filed trade mark as long as it relates to the same trade mark that was the subject of the EU application and protects the same goods or services as the identical EU trade mark.

 

If you have EU trade marks within your IP portfolio that need to be re-registered in the UK, or if you have any general questions or queries on Brexit and trade marks, please contact Manuela Macchi at Keltie as soon as possible. 

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