Posted by Charlotte Ebbutt, Associate
Deadline looms for filing UK trade marks based on pre-Brexit pending EU applications
At the end of the Brexit transition period [31.12.20] the UK Intellectual Property Office (IPO) automatically created comparable UK rights for all registered EU trade marks. However, where EU applications were pending on the 1st January 2021, applicants were required to file a separate UK application if they wanted to protect their mark in the UK. Applicants were given a period of nine months to file a UK trade mark application if they wanted to claim any priority filing date from the pending EU application.
What is a priority claim?
A priority claim effectively changes the filing date of an application to that of the ‘priority date’. This means that (barring some exceptions) if you file a trade mark in one country and then within 6 months file an application for the same mark in another country, the second application will be considered as having been filed on the same date as the first application provided that such priority is claimed.
Why is it beneficial?
Claiming priority can be beneficial because it means that if an identical or similar trade mark is filed by a third party between the date the first application was made and the date that the second application was filed, the second application will have ‘priority’ over the third party mark. This means that the second application and will be treated as if it had been filed before that third party’s application and will prevent the third party from registering ahead of the second application. This is particularly useful if you can’t afford to file in all relevant countries at the same time (more countries more cost), or don’t know which jurisdictions you want, or need, to seek protection in when you first file.
What is the deadline for filing?
In order to claim the priority filing date of the original EU trade mark application, the separate UK application must be filed before the 30th September 2021. Given that we are now in holiday season, rights holders and prospective applicants should be mindful of not leaving it to the last minute before filing such applications so as to ensure that there is time for examination and potential re-filing (if necessary) before the deadline.
What are the criteria for filing?
In order to register an EU mark that was pending on the 1st January 2021 as a UK trade mark, and successfully claim priority, your application must meet the following criteria:
- The application must relate to the same trade mark that was the subject of the pending EU trade mark application; and
- It must seek to protect goods and services that are identical to, or contained within, the original pending EU trade mark application.
If the above criteria are not met then your application will not be able to claim the earlier EU filing date.
The clock is ticking…
We continue to work with our clients to provide assistance in protecting their trade marks in the UK, EU and other jurisdictions. Please get in touch with a member of the team if you require advice or assistance on protecting your brand.
If you have any enquiries, please contact Charlotte Ebbutt on:
01865 268 386 Email us
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