Brexit readiness for overseas medical devices manufacturers: trade marks

Welcome to the second part in our Brexit readiness series for medical devices manufacturers, particularly those based outside the European Economic Area (EEA) and the UK. In Part 1, we covered legal presence requirements; in this instalment, we provide a short checklist for those administering a company's trade marks. 

Have you:

Checked the status of your pending EUTM applications?

European trade marks (EUTMs) in existence as at 31 December 2020 (the end of the transitional period) will automatically be given a comparable new UK trade mark registration with the same priority, filing and seniority dates as the corresponding EUTM. No action or payment is needed to obtain these rights. These new UK registrations will be called comparable TMs (EU).

You will not get a UK trade mark registration certificate for a comparable TM (EU) mark, but details of this mark will be on the UKIPO database. Comparable TMs (EU) will have the same renewal dates as the EUTMs from which they derive.

EUTM applications that are still pending at the end of the transitional period will not be "copied" into the UK, so if you require trade mark protection in the UK, you will need to refile your trade mark application at the UK IPO. If you do this within nine months from 31 December 2020, you will benefit from the EUTM's priority filing date.

Considered the costs of separate renewal fees in the UK and EU?

Comparable TMs (EU) will need to be renewed separately from the EUTMs, thereby incurring separate, additional renewal costs. To ease the administrative burden on trade mark owners, the UKIPO is allowing comparable TMs (EU) to be renewed any time up to six months after their renewal date with no late renewal fee.

If you are not interested in the UK market and do not want to hold a comparable TM (EU), you do not need to take any positive action. While the new registration will be automatically created, you can simply let the comparable TM (EU) lapse when its deadline for renewal comes up in the UK (making sure to renew the EUTM separately at the EUIPO).

Remembered the UK in your recent trade mark applications?

If you filed an EUTM recently, it is unlikely it will be registered before 31 December 2020. If you need to protect your goods/services with a registered trade mark in the UK reasonably quickly, you can separately apply for a UK trade mark.

Otherwise, you can wait for the EUTM to be granted and then refile in the UK within nine months from the end of the transitional period (by 31 October 2021). This will postpone the UK application costs, particularly if the transitional period is extended beyond the end of the year (although this currently seems unlikely).

Maintained your UK registrations?

If you have any trade marks registered in the UK, it is generally a good idea not to let them lapse now – they may come in handy.

Got a budget increase for trade mark protection?

After the end of the transitional period, you may need additional funds for renewal and additional UK trade mark applications due to the addition of comparable TMs (EU) and/or UK trade marks to your portfolio. You may also need to increase spend on watching services and disputes to protect those UK rights.