Date: 27 August 2021
As you may know, the UK IPO deadline for filing comparable Trade Mark and Design Applications from EU Applications will expire on 30 September 2021.
If you have any EU Trade Mark or Design applications (whether standalone or designations of an International Registration) which were pending on 31 December 2020, then these may be refiled at the UK IPO before 30 September 2021, and will retain the original filing date. The following points should also be borne in mind:
If you had a pending EU Trade Mark Application at 31 December 2021, or a pending International TM Application designating the EU, and you do not refile this application at the UK IPO before 30 September 2021, then you will have no protection for this mark in the UK. It will, of course, be possible to refile the application in the UK, but this new application will be allocated a filing date of the date on which the application is filed in the UK, rather than keeping the original EU application date. This will mean that there could be intervening rights at the UK IPO which could block your UK application.
It is particularly important to remember that if you had a Registered EU Design at 31 December 2020, but that Registered Design was subject to deferred publication, then this Registered Design will not be considered to have been be fully “registered”, and so a corresponding UK Comparable Design application must be filed. Additionally if you do not refile your EU Design as a comparable UK Application before 30 September 2021, then there may be problems caused with the “novelty” of the design, which may render it unregistrable.
Please note that we have become aware of a number of errors that have occurred with the transfer of data between the EUIPO and the UK IPO at 31 December 2020. This has resulted in a number of IP Rights which were registered in early January 2021 (and which therefore should be refiled as a comparable UK Application) being transferred onto the UK Register as “registered” rights. We would strongly recommend that if any of your rights proceeded to registration in the weeks immediately before or after 31 December 2020, then you should check whether these have been correctly transferred to the UK database.
Please do not hesitate to contact us if you have any queries regarding your EU Trade Mark and Design Rights, and extending protection to the UK. Contact us