Brand owners interested in saving on UKTM filing fees need to act quickly
It is the final opportunity for brand owners to file EUTM applications if they are interested in securing trade mark protection both EU-wide and in the UK without having to pay additional fees for the UKTM application.
The UK has now left the European Union (“EU”), and this will impact brand owners in a number of ways. As the UK government did not request an extension of the Brexit transition period, this period will end on 31 December 2020. Brand owners therefore need to be aware of the provisions of the EU Withdrawal Agreement (the “Agreement”). These have been addressed by BrandWrites here and here.
The Agreement states that from the 1 January 2021, EUTMs will no longer protect trade marks in the UK.
Under the Agreement, the owners of registered EUTMs at the end of the transition period (31 December 2020) will be given a fully equivalent UKTM registration without charge or the need to complete any forms or formalities. The equivalent UKTM will retain the original dates from the EUTM registration (filing, priority, seniority, registration, and renewal) thus ensuring that the brand owner does not lose any rights.
Any owner with a pending EUTM application at the end of the transition period, and an interest in UK protection, will have 9 months after the end of the transition period to reapply for a separate UKTM application without losing the original filing, priority and seniority dates. However, the usual filing fees will need to be paid for those UKTM applications, and the usual formalities will also need to be completed. This means that the application process will start again as it will be subject to the UKTM application process, as opposed to being granted automatically by virtue of having the EUTM registered before the end of the year.
Time to act?
As mentioned above, brand owners need to consider whether they should be filing EUTM applications immediately if they are interested in securing trade mark protection both EU-wide and in the UK without having to pay additional fees for the UKTM application. This is because, once the EUTM application has been filed, it will take around 4 months before registration is secured, provided no objections or oppositions are encountered. This includes objections to the terms used in the goods and services applied for, so wherever possible applicants should take advantage of the EUIPO’s fast track procedure when filing their application, using only acceptable terms when describing the goods and services of interest.
Since demand for the EUIPO’s service will increase towards the end of the year, not to mention holidays over the festive period, the EUTM application will need to be on file in the next few weeks if protection EU-wide and in the UK is of interest – and by the end of August at the latest.
Brand owners interested in saving on the UKTM filing fee need to act immediately, and should consult their trusted advisors without delay. Time really is of the essence.