27 September 2021
Brands Update – September 2021 – 1 of 4 Insights
We summarise important upcoming Brexit-related deadlines.
This is the deadline for filing EUTMs that were pending on 31 December 2020 in the UK so that the UK application can claim the same filing/priority date as the corresponding EU trade mark. Remember that only EUTMs that were registered as at 31 December 2020 were "cloned" into corresponding UK registrations – if UK protection is required for EUTMs that were pending on this date, a separate UK application must be filed. Any UK applications should preferably be filed well in advance of the 30 September deadline in case there are any problems with the application that need to be rectified.
30 September is not just an important deadline for re-filing for UK trade mark protection; it is important for registered designs too. The position is slightly more complex for designs. As well as re-filing any RCDs that were pending on 31 December 2020, there are three scenarios to consider:
This is the date by which pre-2021 registrable transactions (such as assignments, licences, consents and the grant of security interests) should preferably be recorded against comparable UK trade marks and re-registered UK designs. Registrable transactions were not "ported" across from the corresponding EUTMs/RCDs – they must be separately recorded in the UK against the new UK rights. Where a registrable transaction is not recorded at the UK IP Office within a certain timeframe, various negative consequences flow. These consequences were suspended for comparable UK trade marks and re-registered UK designs until 31 December 2021 (20 June 2022 for the adverse costs consequences).
This is the deadline by which owners of comparable UK trade marks and re-registered UK designs must record a UK address for service against them.
To discuss these deadlines in more detail, please reach out to a member of our Brands & Advertising team.