For owners of EU trade marks, if the renewal date is after 1 January 2021, then even if it is renewed at EUIPO prior to the renewal deadline, the UK mark which will be created automatically on 1 January 2021 will still need to be renewed and the UK renewal fee paid in addition to the EU renewal fee. One silver lining is that the UK renewal deadline will be extended.
After the UK registration has been created, the UKIPO will notify the owner or representative of the need for renewal and the renewal date will be extended for 6 months from the date of their renewal letter.
If you were wondering what was going to happen with EU trade marks after Brexit, the UK IP Office does have measures in place. The basic position is that EU registered trade marks will automatically be split on 1 January 2021 into an EU registration covering the ongoing EU member states (but not the UK) and a separate UK registration.
EU applications that have not matured to registration by that date will continue through the EU application process but will no longer extend to the UK. One concession is that a UK application made within 9 months of 1 January 2021 which is identical to the EU application can retain the filing or priority date from that prior EU ‘parent’ application.
Those filing completely new applications in the UK after 1 January 2021 need to be aware that this means a completely fresh UK application made in the first 9 months of 2021 could be challenged by a later filed UK application which is based on the earlier EU application.
As has been the case for many years, those filing UK trade marks should therefore continue to check both the UK and EU registers for prior rights through to 30 September 2021 – even though the UK officially left the EU on 31 January 2020.
