At the end of the Brexit transition period, owners of registered EU trade marks and designs were automatically awarded a comparable UK trade mark or design right to fill the gap in protection following Brexit. However, for EU trade mark and design applications that were pending on the 31 December 2020 such rights were not created automatically. As such, owners of such pending applications now have a non-extendible deadline of 30 September 2021,  to file a corresponding UK TM or Design application extending protection to the UK.

If separate protection has not already been obtained by now for TMs and Designs taking this step is important because:

  • It puts TM owners in stronger position against third parties who have used or applied to register conflicting trade marks in the UK since the original EUTM applications were filed.
  • UK Design applications will benefit from the same filing date as the corresponding EU Registered Design application. This means any design disclosures created since the EU Design application was filed will not limit the protection claimed by the UK Design application.
  • Because of the novelty requirements for designs it may not be possible to obtain any protection at all for the designs in question in the UK after the 30 September deadline.

We therefore recommend TM and Design owners take the following steps by 30 September:

  • Review TM and Design portfolios to check if UK comparable right applications are needed for TMs and Designs covered by EU applications pending on 31 December 2020 (this may be particularly likely where TM applications were subject of longstanding refusal or oppositions or where publication of EU Design applications was deferred for example)
  • Where existing rights are not already in place, file comparable right applications for TMs and Designs for which the UK is an important market before 30 September 2021
  • Where TM owners have opposed third party TM applications it is important check to see if the adverse party has filed separate UK TM applications by the 30 September 2021 deadline to see if they should be challenged.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.