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BREXIP Part 3: Dual Filing Trade Marks in the UK and EU Ahead of Brexit

Author Rachel Nicholls

In our recent series of BREXIP blogs, we have been taking a look at the impact of Brexit on your Intellectual Property.  Here we take a look at the issue of dual filing trade marks, and whether as we get closer to the expiry of the Brexit transition period, you should now be looking to file your trade marks separately in both the EU and the UK.

The Key Dates

The Brexit transition period is currently set to expire on 31st December 2020.  Any extension to that date must be requested by 1st July 2020, however the government has now formally declared that it will not be requesting an extension of time. 

The impact of Brexit on your existing IP

We know from our previous BREXIP blogs that holders of registered EU Trade Marks at the end of the transition period will be given a fully equivalent “cloned” UK registered right at no cost and with no additional procedure required.  Your cloned UK registrations will retain the original filing and priority dates and the renewal dates will be the same as your original EU registrations.

In contrast, where an EU Trade Mark has not yet reached registration by 31st December 2020, it will not be cloned, and no equivalent UK right will issue automatically.  Instead, you will have 9 months until 30th September 2021 within which to re-apply for an equivalent UK right retaining the filing and priority dates of the original EU Trade Mark.  That UK Trade Mark Application will be subject to examination and publication before the UK Intellectual Property Office, even though it may already have been examined and published before the EU Intellectual Property Office.

Dual filing trade marks needs to begin in July 2020

When the issue of Brexit first arose, there was an unfounded panic from some in the industry that EU rights would be lost in the UK post-Brexit.  As a result, applicants were undertaking dual filings in both the EU and UK, incurring additional cost and ultimately giving rise to a duplication of rights in the UK.

Up until this point, we have been advising against dual filing trade marks on the basis that EU applications had plenty of time to reach registration before the expiry of the transition period on 31st December 2020.

However, as an EU Trade Mark Application takes around 6 months as standard to achieve registration, we are now entering the period where it is highly possible that a new EU Trade Mark Application filed from July onwards will not achieve registration prior to 31st December 2020, in particular if any objections to your application were to arise.  If you were to find yourself in this position, you would then need to reapply in the UK, facing additional examination and publication, which would significantly impact on your registration date in the UK.

Example timelines for Trade Mark Applications

A smooth UK Trade Mark Application will take approximately 3 months to achieve registration.  In contrast, a smooth EU Trade Mark Application will take approximately 6 months to achieve registration.

If you were to apply for a UK Trade Mark Application on 15th July 2020, provided your application faced no obstacles, you would enjoy a UK registration date around 15th October 2020.  If you were to apply for an EU Trade Mark on 15th July 2020, provided your application faced no obstacles, you would enjoy a registration date around 15th January 2020.  This date is after the expiry of the Brexit transition period, and therefore on 31st December 2020, you would only have a pending EU Trade Mark Application.  This of course means that you would need to reapply in the UK.  That reapplied application would then take approximately 3 months to achieve registration in the UK.  You would therefore only enjoy registered protection in the UK around March 2021.

Taking into consideration that not every EU Trade Mark Application is smooth, which would further extend the EU Trade Mark timeline, it is highly likely that new EU Trade Mark Applications filed from July onwards will not achieve registration before 31st December 2020.  It is therefore likely that in choosing to rely solely on an EU Trade Mark Application from this point onwards will significantly delay registration in the UK.

At Sonder & Clay we are experts in IP strategy and Trade Mark strategy, and can advise you fully on your own personal timeline.  We are happy to sit down with you to discuss the likely implications of Brexit on your own IP portfolio and to offer advice on the approach that you should take for your future Trade Mark filings.

Appointment of representatives for dual filing trade marks

The issue of representation before the UKIPO post-Brexit has not yet been finalised.  The current rules of the UKIPO stipulate that your representative address must be within the EEA, and this could well remain the case.  In the alternative, it is possible that the UKIPO may consider amending this rule to ensure that representative addresses are UK based.

Either way, we would always recommend that you have a UK professional recorded as your representative.  A UK Trade Mark Attorney practitioner, like Matt Sammon and Rachel Nicholls at Sonder IP, is fully qualified and experienced in UK law and practice, and is fully equipped to assist you in the protection of your IP in the UK.  In addition, UK professionals are up to speed on all issues relating to Brexit, and the impact that this may have on your Intellectual Property.

The sooner you are able to consult with and engage a UK representative, the quicker we will be able to get up to speed with your portfolio.  We will be able to advise fully on best practice that is right for you, and will be able to advise on next steps to ensure that your Intellectual Property is Brexit ready.

Knowing that the issue of Brexit may incur additional fees for IP holders, we at Sonder IP do not believe that you as the IP rights holder should be penalised for Brexit.  We have already undertaken to appoint ourselves in respect of your cloned UK registrations at no cost to you.  We are also offering a large discount on fees for re-applied UK applications. 

How to manage the Brexit transition period to your IP advantage

To enable you to use the current transition period to your IP advantage we have created a Sonder IP Brexit and IP (BREXIP) timetable.

Download your Sonder IP – BREXIP (Brexit and IP) timetable

Our timetable shares key dates and tasks during the Brexit transition period for any IP rights owner. Each task is supported by an article detailing our strategic advice and rationale behind our IP recommendations. Each BREXIP article is shared in a timely manner on our blog, and all topics are covered from an IP and Brexit perspective

Read our other BREXIP articles:

BREXIP All you need to know about Brexit and Intellectual Property

BREXIP Part 2: Conduct an IP agreement and IP License agreement review ahead of Brexit

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