• IPO to register a UK trade mark
• EU Intellectual Property Office (EUIPO) to register an EU trade mark (EUTM)

From the 1 January 2021, EUTMs will no longer protect trade marks in the UK. Under the Withdrawal Agreement Act, on the 1 January 2021, the IPO will create a comparable UK trade mark for all right holders with an existing EU trade mark.

Existing EUTMs will still protect trade marks in EU member states. UK businesses can still to apply the EU Intellectual Property Office for an EUTM.

There will be no changes to UK-registered trade marks as a result of the UK leaving the EU.

If you have a pending EUTM application, you’ll be able to apply to register a comparable UK trade mark in the 9 months after 1 January 2021. You’ll keep the earlier filing date of the pending EUTM.

Receiving a comparable UK trade mark

On 1 January 2021, IPO will create a comparable UK trademark for every registered EU trade mark (EUTM). Each of these UK rights will:

• be recorded on the UK trade mark register
• have the same legal status as if you had applied for and registered it under UK law
• keep the original EUTM filing date
• keep the original priority or UK seniority dates
• be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM

You will not:

• need to pay for your equivalent or comparable UK trade mark – and there will be as little administration involved as possible
• receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK

Registering a pending EUTM application as a UK trade mark

We will only create a comparable UK trade mark for EUTMs registered before 1 January 2021.

If you have an EUTM application that’s still pending on 1 January 2021, you’ll be able to:

• apply to register a comparable UK trade mark in the 9 months after 1 January 2021
• retain the earlier filing date of the pending EUTM
• claim any valid international priority you had on the pending EU application, along with any UK seniority claims recorded against it

If you apply to register for a comparable UK trade mark, the application must:

• relate to the same trade mark that was the subject of the EUTM application
• seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application

If the details of your application do not match those of the corresponding EUTM application, you will not be able to claim the earlier EU filing or priority dates.

You must submit your application within 9 months of 1 January 2021. We will then:

• treat the pending EUTM application as a UK application
• examine it under UK law

The usual UK fees of £170 will apply, including one class of goods or services, and an extra £50 for each additional class.

You can fill in the paper forms if you want to apply by post. This costs £200 for one class plus £50 for each additional class.

You may be intending to file a UK trade mark application that does not correspond to a pending EUTM application in the 9 months after 1 January 2021. If so, you should note that someone could file a UK application after yours and claim the earlier date of a corresponding EUTM application that was pending on 1 January 2021. Where this happens, the later-filed UK application will take precedence.

Before applying for a UK trade mark in the 9 months after 1 January 2021, use the EU Trade Mark Register to check whether any EUTM applications:

• were pending on 1 January 2021
• hold a filing or priority date earlier than your own

Priority and seniority claims

A priority date claimed under the Paris Convention that has been recorded against the corresponding EUTM will be inherited by the comparable UK trade mark.

Accordingly, where proceedings involve a comparable UK trade mark with a priority claim inherited from the corresponding EUTM, the date of that priority claim will have effect.

Seniority is a concept which derives from EU legislation and has applied only to EUTMs and UK trade marks that have been converted from EUTMs. From 1 January 2021, it will also apply to the UK comparable trade marks.

Seniority allows a business to consolidate its multiple national registered trade marks into one single EUTM by retaining the ‘senior’ dates of those national rights and recording them against the EUTM.

Where the national marks are surrendered or allowed to lapse, the owner is deemed to have the same rights as they would have if the earlier national mark(s) had continued to be registered.

Seniority can determine the effective date of an existing EUTM. Seniority claims based on earlier UK or International (UK) trade marks will be recognised.

The new law means that any seniority claim based on an earlier UK or International (UK) trade mark that has been recorded against an EUTM will be retained by the comparable UK trade mark.

Automatic retention of existing priority and seniority dates

The retention of existing priority and seniority dates in comparable UK trade marks will be automatic.

As the holder of an EU right, you will not have to inform IPO of any earlier effective dates.

This is because filing, priority and seniority information will be automatically transferred onto the new UK right.

The UK application process will provide you with a way of recording priority and seniority dates for applications corresponding to pending EUTM applications filed within 9 months after 31 December 2020.

Pending cancellation actions

On 1 January 2021, there will be registered cases which are going through cancellation actions. We will create comparable rights from these EUTMs. However, as per the Withdrawal Agreement Act, we will honour the result of a cancellation action on the comparable right.

The cancellation will only have effect if the grounds are applicable in the UK.

This means that you will not need to launch a separate cancellation action on the comparable right after 1 January 2021.

Use and reputation

For a national trade mark, an uninterrupted period of 5 years’ non- use in the UK can render a mark vulnerable to challenge.

Applying this approach to comparable UK trade marks created on 1 January 2021, many of which will correspond to EUTMs that have never been used in the UK, would not provide enough protection for those new comparable rights. It would likely lead to outcomes that are unintended and unjust.

To address this, the new law ensures that any use of the mark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the comparable UK right.

Where the 5-year period includes time before 1 January 2021, use in the EU will be considered. Where the period includes any time after 1 January 2021, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account.

In all cases, the 5-year period of suspended use is activated bylast use of the corresponding EUTM or comparable trade mark. Where that use was of the corresponding EUTM, and it was made in the EU before 1 January 2021 (whether inside or outside of the UK), it will count for the purposes of the compable trade mark.

Assessment of reputation

In relation to the consideration of any time before 1 January 2021, reputation of the corresponding EU trade mark, in the EU but not necessarily in the UK, will be considered for the purposes of the comparable UK right.

Where oppositions filed after 1 January 2021 are based on a comparable UK trade mark, the same approach will apply to conditions of use.

For any part of the 5-year period that falls before 1 January 2021, use of the corresponding EU trade mark in the EU will be considered, regardless of whether it was inside or outside of the UK.

Further changes to UK trade mark law

The Withdrawal Agreement covers the above-mentioned aspects for EUTMs, there are other changes that must be made to UK legislation on trade marks for the effective administration and implementation of the comparable rights. These are set out below.

In addition to this, amendments to the Trade Marks Act 1994 (TMA), and secondary legislation in the form of the Trade Marks Rules 2008, and amending and standalone regulations are required to reflect that the UK is, after 1 January 2021, no longer part of the EU trade mark system.

Opting out of the comparable UK trade mark

If you do not wish to hold the new right, you may opt out of holding it. If you opt out, the comparable right will be treated as if it had never been applied for or registered under UK law.

You may not exercise an opt-out right if you have used the comparable UK right in the UK. This also applies if you have:

• assigned or licensed or entered into an agreement in relation to it
• you have initiated litigation based upon the comparable UK right

Requesting an opt-out

Opt-out requests can only be submitted after 1 January 2021. Any requests made before then will not be valid.

The notice template that you must use to submit your request will be available on GOV.UK after 1 January 2021.

You will need to submit a notice to IPO providing the EUTM number, along with details of anyone with an interest in the EUTM.

By law, notice to interested third parties must be given for opt-out to have effect. You must confirm that such action has been taken.

If IPO determines that an opt-out right has been exercised in circumstances where it was not permitted, the comparable UK trade mark may be reinstated if the equivalent or comparable UK trade mark was removed from the register.

Registration numbers for equivalent and comparable UK trade marks

IPO will provide a means for identifying comparable UK rights and distinguishing them from existing UK trade marks.

The number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009.

The following examples demonstrate how comparable UK trade marks will be codified:

Existing EU trade mark	Comparable UK trade mark
000000977	UK00900000977
000025197	UK00900025197
000340513	UK00900340513
017867542	UK00917867542

By retaining the EUTM number, we aim to keep the administrative process to a minimum.

Renewing trade marks

Once a comparable UK trade mark is created, a separate renewal fee will apply for each comparable UK trade mark and the existing EUTM.

The fees will need to be paid separately to IPO and the EUIPO.

For the purposes of future renewal, the comparable UK right will retain the existing renewal date of the corresponding EUTM.

Under existing law, we send a renewal reminder to any UK trade mark owner whose right is due to expire, and we do so 6 months ahead of the expiry date.

This practice will be retained for all comparable UK trade marks with renewal dates that fall more than 6 months after 1 January 2021. However, where the comparable UK trade mark expires in the 6 months after 1 January 2021, we will adopt a new process.

We are also changing the law to accommodate EUTMs that have expired in the 6 months before 1 January 2021, and are still in their late renewal period when we leave the EU.

Trade marks that expire 6 months after 1 January 2021

Where the comparable UK trade mark expires within 6 months after 1 January 2021, there will not be enough time for IPO to issue the standard renewal reminder in advance of the expiry date.

A renewal reminder will be sent to you on the actual date of expiry, or as soon as practicable after that date.

The reminder will inform you that the comparable UK trade mark has expired. You will be given another 6 months from the date of the letter to renew the right.

This procedure equates to renewal of the right after its expiry date has passed.

The ‘late’ renewal of comparable UK trade marks which have expired within 6 months after 1 January 2021 will not be subject to an additional renewal fee.

You will only have to pay the standard UK renewal fee calculated by reference to the number of classes retained in the comparable UK trade mark.

Where the comparable UK right is not renewed, it will be removed from the register but may be restored at a later date in accordance with existing UK law.

Where an EUTM renewal date falls after 1 January 2021, early payment of the renewal fee at EUIPO, before 1 January 2021, will have no effect in respect of the comparable UK trade mark.

A comparable UK trade mark with a 10-year renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action and fee.

This is regardless of whether a renewal action was taken on the corresponding EUTM before 1 January 2021.

Trade marks that expire before 1 January 2021

IPO will create comparable UK trade marks from any EUTM which:

• has expired in the 6 months prior to 1 January 2021
• has not been subject to a late renewal action at EUIPO is still within its 6-month late renewal period

These UK rights will hold an ‘expired’ status, and their continued effect in the UK will depend on late renewal of the corresponding EUTM at EUIPO.

Where the corresponding EUTM is subject to late renewal, the renewal will also have effect on the expired comparable UK trade mark.

This means that the comparable UK trade mark will be automatically renewed as a result of the EUTM’s late renewal.

In this scenario, you will not have to pay any renewal fees in respect of first renewal of the comparable UK trade mark.

If the expired EUTM is not late-renewed at EUIPO, the comparable UK mark (which was created on 1 January 2021 in the UK) will be removed from the UK register on expiry of the corresponding EUTM’s late renewal period, but with effect from 1 January 2021.

Certification and collective marks

As with conventional EU trade marks, IPO will create comparable UK rights from all EU certification and collective marks registered at EUIPO before 1 January 2021.

Certification and collective marks perform a different function to conventional trade marks. Certification marks provide a guarantee that goods or services bearing the mark meet a defined standard or possess a particular characteristic.

Collective marks indicate that the goods or services originate from members of a trade association, rather than just one trader.

The registration of both certification and collective marks is subject to the registering authority’s approval of regulations governing how the marks are used.

These regulations must be available for third parties to view and, in the case of many EU certification and collective marks, they will be in languages other than English.

IPO will not automatically import onto the trade mark register the regulations governing use of the EU mark at the point of creating the comparable UK right.

IPO will not request that the holder provide an English translation immediately after 1 January 2021.

IPO will contact you if you own a comparable UK certification or collective mark when we need to inspect the regulations (for example, where the mark becomes subject to proceedings). Where they are in a language other than English, we will request a translated version of the regulations. Failure to provide translated regulations will result in the loss of the right.

Licences, security interests and assignments

Subject to any specific conditions it may require, the new law confirms that a licence or security interest recorded against an EUTM will continue to have legal effect in the UK.

On 1 January 2021, you may hold an EUTM which is subject to a licence or security interest. This licence or security interest may authorise actions in the UK which would otherwise infringe the EUTM.

Any licence or security interest that refers to an EUTM and authorises acts in the UK will be treated as if it applies to the comparable UK trade mark.

UK law does not require that transactions are registered per se. Licences and securities registered at IPO within 6 months of the transaction provide some protections which do not apply to unregistered transactions.

These protections help people with an interest in the trade mark and those seeking full relief for infringement. The protections are largely dependent upon proof that an application to register a transaction has been made.

IPO recognise that applications to register licenses and security interests relating to comparable trade marks cannot be submitted before those rights are created.

The period for recording a transaction on the UK register will be extended to 12 months from 1 January 2021. This is in respect of the UK comparable trade mark for a license or security interest already registered in the EUTM register.

Where an EUTM has been the subject of an assignment before 1 January 2021 that has not been recorded in the EUTM register, the comparable trade mark will be granted to the assignor.

The assignor or the assignee will have the right after 1 January 2021 to apply for the registration of the comparable trade mark in the name of the assignee.

Jurisdictional arrangements and pending proceedings

UK courts can currently act as EU courts in trade mark actions relating to EU trade marks. Cases are heard under the EU Trade Mark Regulation, and the court can issue pan-EU injunctions.

We anticipate that on 1 January 2021 there will be a small number of ongoing cases. The new legislation ensures these cases will continue to be heard as if the UK were still an EU member state. Actions and remedies taken or granted by the court are applicable to the comparable UK right only.

As the UK will no longer be under the jurisdiction of the EU legal system after 1 January 2021, any EU-wide injunctions will not apply to the comparable UK right.

This applies to instances where you are a defendant in IPO proceedings based on an EUTM. It also applies if you are the holder of an EUTM and are involved in proceedings to oppose or cancel a UK trade mark.

These proceedings will continue towards resolution on the basis of the law as it stood before 1 January 2021.

Existing injunctions

Court injunctions can prohibit actions which would otherwise give rise to the infringement of a registered trade mark.

Where an injunction in place at 1 January 2021 prohibits actions in the UK which would infringe an existing EUTM, the terms of that injunction will be treated as if they also apply to the comparable UK trade mark

EUTM registrations and applications reinstated after 1 January 2021

Under the EU Trade Mark Regulation, a right that has been struck from the EU register because of the applicant or owner’s failure to meet a deadline may be reinstated later and treated as if it had continuous legal effect.

Comparable UK trade marks will only be created from EUTMs which are actively registered immediately before 1 January 2021. EU rights not registered on that date but which are subject to reinstatement will not automatically result in the grant of comparable UK rights.

To address this, the new law provides holders and applicants of reinstated EU rights with the means to preserve those rights in the UK.

Where registered EU rights are reinstated after 1 January 2021, and the proprietor notifies IPO of this, we will create a comparable UK trade mark.

Reinstatement of EU rights can only occur where application is made to the EUIPO within one year of the missed deadline.

If you hold a registered EUTM which was reinstated after 1 January 2021, and you have not been granted a comparable UK trade mark, you should inform IPO within 6 months. Contact information@ipo.gov.uk.

If you have a pending EUTM application which was reinstated after 1 January 2021 and it holds a filing date before 1 January 2021, you may submit a UK trade mark application claiming the earlier EU filing or priority date.

You can do this within 9 months of the date on which the corresponding EU trade mark application was restored.

Conversion

An EU trade mark registration or application that has been refused or withdrawn may be converted into a national right.

This is subject to certain conditions, and provided that the application for conversion is submitted to the EUIPO within 3 months of the EU right ceasing to have effect.

Where conversion takes place, the resulting national right will inherit the earlier filing, UK seniority, and priority dates held by the EU right.

On 1 January 2021, the EU Register will contain a small number of rights which, while being either refused or withdrawn, are within the 3-month period provided for the purposes of requesting conversion into a national right.

Because of their status on 1 January 2021, these EU rights will not be included in our exercise to create comparable UK trade marks.

We recognise that any EUTM refused or withdrawn within the 3 months prior to 1 January 2021 still enjoys the right to conversion into a UK trade mark. We will honour that right.

Where an EUTM registration or application was refused or withdrawn at 1 January 2021, but such action occurred less than 3 months before that date, the law preserves your right to seek conversion of the EU right into a UK right.

That right is only effective for a period of 3 months after the date of the final decision giving effect to refusal or withdrawal of the EU right.

Anyone seeking to exercise conversion rights after 1 January 2021 should apply to register a UK trade mark and claim the earlier filing or priority date of EU application/registration which has been subsequently refused or withdrawn.

The application form will confirm that conversion rights are preserved and will allow you to retain the earlier filing date of the EUTM which was refused or withdrawn at 1 January 2021.