Building off Brexit

As you will recall, the United Kingdom was officially severed from the EU due to Brexit as of 31 December 2020. Fortunately, a grace period has been provided to those who have an interest in obtaining a trade mark registration in the UK. This grace period affords trade mark applicants the opportunity to convert their UK designation (originally part of the EU application) to an independent UK application. This process is furthermore made available to Madrid Protocol applications which similarly designate the UK and remain pending between 31 December 2020 and 30 September 2021.

This grace period will, however, imminently expire on 30 September 2021.

How this will affect you?:

If you have previously filed a trade mark application in the EU (or a Madrid Protocol application designating the UK) which has remained pending since 31 December 2021 you will be required to follow the below procedure:

  1. If you wish for your application to extend to the UK, you will be required to refile the application in the UK prior to 30 September 2021.
  2. Fortunately, if the UK application is refiled prior to this date, you will nonetheless be in a position to claim the earlier EU filing date as the priority date of the UK application. 
  3. Most importantly, you will be required to refile the UK application with the identical trade mark and specification. If there exist any dissimilarities between the respective marks the latter UK application will consequently be rejected by the UK Intellectual Property Office.
  4. If you fail to file the application before 30 September 2021, you will then be required to file an entirely new application in the UK and will as a result not be able to claim the earlier priority date of the EU application. 
  5. If your trade mark application has already been registered in the EU you will then not fall vulnerable to the above position.

How we can assist

Please feel free to contact our trade mark department, Lisa McIlwaine-Hill at LisaM@kisch-ip.com or Jade Courtney at jadec@kisch-ip.com should you have any concerns regarding your pending EU applications and the enforcement thereof. We will then gladly furnish you with a quotation and commentary on what is required from you in order to ensure that your trade mark rights are secured in the UK.