In the current climate, we understand that businesses are looking to make cost savings while maximizing the return on their spend. Here are some simple measures that organizations should explore to make the most of their funds when it comes to trademark management in the United Kingdom and European Union.
1. "Free" UK applications
The UK government has confirmed that, following Brexit, holders of EU trademark registrations will be granted a comparable UK trademark registration – for free. This is to ensure that owners have continued protection for such rights, even after the UK has left the EU.
Fees to maintain these "free" UK registrations will only become payable to the UK Intellectual Property Office (IPO) when the right comes up for renewal (at the same time as the EU registration). At this point, if it is no longer of use to the owner (i.e. not being used or licensed), the UK right can simply be allowed to lapse or expire without further expense.
It is important to note that applications still pending at December 31, 2020 (the current date at which the "transition period" ends and EU rules cease to apply in the UK) will not be granted an equivalent right, meaning applicants would be required to file a separate application at the UK IPO, incurring additional costs.
However, provided that it is done very shortly, an application for an EU trademark submitted now, or in the near future, has the potential to be granted before the end of the year, resulting in both an EU registration and a "free" UK registration. This window of opportunity will not last long.
As the impact of coronavirus is reportedly causing delays in the examination process at the EU IPO, we recommend that organizations considering filing applications do so now, and businesses with pending applications closely monitor their progress, in order to achieve registration in the EU before "Brexit day".
2. Seniority claims
Businesses can sometimes elect to file an EU trademark (covering, currently, 28 member states) in order to consolidate existing national registrations held for individual countries. However, few take advantage of recording pre-existing national rights on the EU trade mark register in the form of "seniority claims".
Where seniority is claimed, the owner of the EU trade mark registration can benefit from the earlier national rights – even if the national registrations are later allowed to lapse.
While there are a number of strict requirements to be met in order to claim seniority, it can be an effective measure for cost savings, in terms of paying renewal fees, and can save considerable time and resources, by making the trademark portfolio more manageable.
3. Auditing registrations
Large portfolios can be daunting and sometimes organizations will continue to pay renewal fees without giving due consideration to whether the marks (as registered) are still in use, or whether there are duplicate registrations (covering the same mark for the same (or broader) goods and services) – particularly where ownership of trademarks may be divided amongst companies in a group structure, rather than centralised to one IP-holding entity.
Auditing your portfolio, including identifying marks no longer in use or duplicate registrations, allows your business to focus on areas for streamlining, which can result in significant cost and resource savings.
Originally published July 9, 2020
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.