How to keep comparable UK trade marks within the WIPO system

At the end of the Brexit transition period on 31 December 2020, a comparable UK trade mark registration will be created for every EUTM that is registered. International Registrations (IRs) designating the EU will be treated in the same way – a comparable UK trade mark registration will be created for every designation that has been accepted.

These comparable UK trade mark registrations will be national UK rights, governed by UK law. This means that comparable UK trade mark registrations driving from IRs will be separate stand-alone rights that do not form part of the WIPO system. They will therefore need to be renewed and administered separately from the IRs from which they derive.

However, there is a way to effectively keep the comparable UK trade mark registration within the IR system and so regain the advantages of centralised management. It involves using the system of replacement – a WIPO procedure which allows an IR designation to replace a national right (while retaining the earlier priority and filing dates of the national right).

To take advantage of the system, the holder of an IR that currently designates the EU would have to designate the UK for that IR. The system of replacement can then be used so that the IR designation replaces the comparable UK trade mark registration (but the earlier priority and filing dates of the comparable UK trade mark registration are retained). The holder may request the UKIPO to take note of this replacement in the UK Register using a TM28.

The same system can be used to bring any UK trade mark registration (including any comparable UK trade mark registration, irrespective of whether or not it derives from an IR designating the EU) into a corresponding IR. 

There is no urgency to do this – all steps can be taken after 31 December 2020. However, there is obviously a cost involved in designating the UK for an IR (and that designation would be examined by the UKIPO and published for opposition purposes). Whether that cost will be recouped by savings in renewal and administration fees will depend on the mark in question, its longevity and any plans for it. For more information, see here.

UKIPO says that new UK supplementary unregistered design won't arise if first disclosure is in the EU27

Unregistered Community Designs (UCDs) are a very useful short-term form of protection for designs, particularly relied upon in the fashion industry.

UCDs in existence as at the end of the Brexit transition period on 31 December 2020 will continue to be protected in the UK until the corresponding EU right expires. These UK rights will be called "continuing unregistered Community designs".

Furthermore, a new UK "supplementary unregistered design" (UK SUD) is being created, which will be equivalent to the UCD (but will cover the UK only) for new designs made available to the public after 31 December 2020. The UK SUD will sit alongside the existing UK unregistered design right.

For some time, there has been debate about whether first disclosure in the EEA is required for UCD to arise. Likewise, there has been debate about whether first disclosure in the UK (and qualifying countries) is a necessity for UK SUD to arise. The wording of the legislation is, in both instances, unclear.

The UK IP office (UKIPO) has recently announced that: 

• UK SUD will only be established by first disclosure in the UK (or a qualifying country).
• First disclosure in the EEA (ex UK) will not establish UK SUD.
• First disclosure in the EEA (ex UK) could destroy the novelty of the design should the owner later seek to establish UK SUD. 

The position for UCDs remains unclear.

While it will ultimately be for the UK courts to determine if this is the correct interpretation of the UK SUD legislation, it is an interesting steer from the UKIPO. If the UK courts and ECJ both follow suit, it will mean that a designer will not be able to benefit from both UCD and UK SUD for the same design.

The options in this scenario (where both UCD and UK SUD are required) include:

• Simultaneous disclosure in both the UK (or a qualifying country) and EEA (ex. UK) (eg online) although it is not yet clear whether this would be sufficient for both forms of protection to arise.
• Relying on registered design protection in one of the jurisdictions.
• Relying on the other form of UK unregistered design right in the UK, which protects the shape and configuration (but not surface decoration) of certain products.

We can advise in more detail on the options.

UKIPO changes address for service rules

The UK IPO has announced that, from 1 January 2021, an address for service in the UK or Channel Islands will be required for all new applications and new requests to start contentious proceedings. An EEA address for service will no longer suffice.

The change will apply across all registered IP rights (patents, trade marks and designs). However, a UK or Channel Islands address for service will not be required if the only action is the renewal of registered or granted rights (in line with the treatment of renewals under the existing rules).

Furthermore, there are transitional provisions for on-going cases and comparable UK rights can continue to have a non-UK address for service for up to three years after the end of the Brexit transition period. 

It should be noted that the change only applies to the rules on address for service. The rules on rights of representation remain unchanged.

Find out more

To discuss any of the issues raised in this article, please contact a member of our Brands & Advertising team.