16 April 2021

Post Brexit trade mark update for cloned UK Registrations based on International Designations

Brexit has introduced a new complexity when dealing with your clients’ UK and EU trade mark registrations. This update provides you with a brief explanation as to why you may need to take action on behalf of your international clients before 30 June 2021.

In brief, for cases where the EU was part of a Subsequent Designation filed in the first part of 2011, the renewal anniversary for the UK cloned case has already passed and the UK right will have expired. As a result your client currently has no protection in the UK in such cases. For other cases, your records may be inaccurate and this could lead to a loss of rights if the renewal dates are not checked.

Renewal dates

When the UK left the European Union post Brexit, the UKIPO undertook to create cloned cases from EU Trade Mark Registrations as well as EU Designations of International Registrations. The position for EU Trade Mark Registrations was clear because this was part of the withdrawal agreement. However, the position for EU Designations of International Registrations was less certain. Ultimately, the UK was unable to reach an arrangement with WIPO which would enable the UK to be designated as well as the EU within the International Registration and so UK cloned cases were created.

For UK cloned cases created from EU Designations where the EU was designated at the point of filing of the main International Application, the renewal date remains the same as the renewal for the International Registration. However, where the EU was designated in a Subsequent Designation Application, the UKIPO has applied the renewal date from the date of the Subsequent Designation and not the date of the original International Registration. This means that there will be some instances where the Subsequent Designation was filed in 2011 and the renewal anniversary has already passed, so the cloned UK case will have expired. This is particularly concerning at present because the UKIPO has a backlog in sending out renewal reminders for these newly created cases. However, there is a grace period of six months to allow for late filing of renewal applications. This period will end on 30 June 2021 and during that time there is no penalty for late renewal.

We recommend that you check your records for International Registrations where the EU was subject to a Subsequent Designation Application. We are able to assist with verifying the renewal dates for those Subsequent Designations as part of the checking work we would do when taking over representation for UK cloned cases. It is also worth noting that cloned cases created from EU Designations do not benefit from the three year period for continued EU representation so a UK address for service is required now for any work required for these UK cloned cases.

UK cloned case numbers

A further complication for cloned UK Registrations based on International Designations is that the numbering system used by the EUIPO differs from that used at WIPO and so the numbers do not necessarily correspond. Again, we check these as part of the takeover work we carry out and we would be delighted to assist you.

For any further information or assistance, please contact Clare Turnbull or your usual Trade Mark attorney.