It now seems after delays, extensions and transition periods that the UK’s exit from the European Union will shortly be complete at the end of this year.
Owners of EU trade marks registrations – and this includes protected designations of the EU in International Registrations – should by now know that they are going to get a comparable UK trade mark registration automatically and at no cost.
The comparable UK registration will have identical details to that covering the EU.
Therefore, we strongly recommend that any changes that need recording are dealt with promptly to avoid them needing to be done against two registrations (i.e. the EU or International, and the comparable UK registrations).
While assignments are usually, but not always, recorded in a timely fashion after they have been executed, it is more common to leave updates to an owner’s name or address until renewal, or these updates can easily be overlooked.
It is therefore worthwhile reviewing cases and updating the ownership at the EUIPO or WIPO without further delay so that this ownership update can be transposed to the UK Register automatically when the comparable UK registration is made.
Updating EUTMs and IRs for an owner of multiple registrations is more cost-effective than doing them one-by-one and, in this instance, will also save on recordal fees on comparable UK registrations. None of these recordals are expensive but acting now is a way to save a few pounds, useful in the current climate.
The EUIPO processes recordals very quickly. However, WIPO is not as swift and so owners of International Registrations that designate the EU and with incorrect owner’s details should consider getting recordal applications filed as soon as possible so they can be recorded in time.
You may have EU or IR registrations (designating the EU) falling due for renewal in the early part of the new year and you may also think of getting your renewals in early so these too can be transposed on to the UK Register and save on some renewal fees. Alas, this won’t work. Comparable UK registrations will take the previous renewal date.
This actually means if you manage your renewals in-house that you should take care with any EU or IR registrations (designating the EU) that are renewable in early 2021. If you renew now, receive the confirmation and update your records to show a next renewal date of 2031 and then run a duplication tool to create your comparable UK registration it too may have a 2031 renewal date. However, the comparable UK registration retains a 2021 renewal date so take precautions not to miss.
Stobbs are able to fully assist with recordals and renewals before the UKIPO, EUIPO and WIPO (and elsewhere), before and after Brexit, and are well equipped to handle this administration where support is needed.
Trademarks / Brexit
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