Comparable UK trade marks and designs

Following the end of the Brexit transition period, from 1 January 2021, European Union (EU) trade mark and design registrations no longer covered the United Kingdom (UK). However, a mechanism was put in place to enable EU trade mark and design applications and registrations, which were in progress or already registered, to continue to take effect in the UK.

1. Existing EU trade mark and design registrations

For all EU trade mark registrations and design registrations ('Registered Community Designs') which were registered and in force on 31 December 2020, the UK automatically created a comparable UK trade mark registration or design registrations. These inherited the filing date and priority date of the EU cases and have the same renewal dates. Proprietors then had corresponding EU and UK registrations which will require to be renewed independently if both are to be kept in force.

2. EU designations of international (Madrid Protocol) trade mark registrations and Hague agreement designs.

As with EU trade mark registrations, the proprietors of international registrations which designate the EU, for which a statement of grant of protection had issued by 31 December 2020, were given comparable UK trade mark registrations. These were separate to the international registrations and require to be renewed independently at the next renewal date of the international registration. Something similar applies for Hague Agreement design registrations which cover the EU.

3. Pending EU trade mark and design registrations

For any EU trade mark application, or application for a Registered Community Design was not yet registered but was pending as of 31 December 2020, the proprietor had the right to file a comparable UK trade mark application which will inherit the filing date and priority date of the EU right. These had to be filed by 30 September 2021. They are said to 'claim priority' from the EU right although this is an unsual and imprecise use of the phrase 'claim priority' and does not refer to the normal Paris convention priority right. In any event the new UK applications inherited the filing date and convention priority date of the EU right.

For each pending EU trade mark application, any application for a comparable UK trade mark had to be for the same mark and for goods and services which are within the scope of the EU trade mark application. It is possible for the comparable UK trade mark to cover only some of the classes of goods and services of the EU application, but the scope of protection cannot be extended beyond the scope of the EU right. There were official fees for filing these applications, which are the same as the official fees for regular UK trade mark and design applications.

Once filed, the new UK applications were processed and examined in exactly the same way as conventional UK applications, hopefully leading to new registrations which are independent of the EU rights from which they are derived.

4. International Trade Mark Registrations (Madrid Protocol) designating the EU

For any international trade mark registrations under the Madrid Protocol which designate the EU and where the Statement of Grant of Protection had not issued by 31 December 2020, a comparable UK trade mark application could have been applied for as per section 3 above. It was however necessary that WIPO has issued the international registration before 1 January 2021.

5. Numbering of automatically created registrations

For EU trade mark registrations which were granted by 31 December 2020, the automatically created comparable UK trade mark registration was allocated a registration number which begian with UK009 followed by the last 8 digits of the EU registration. Where the comparable UK trade mark registration was based on an EU designation of a Madrid registration the UK registration number begins with UK 008 followed by the last 8 digits of the Madrid registration number. For EU design registrations granted by this date, the automatically created comparable UK design registration has a registration number which is the same as the EU registration number preceded by a 9.

UK IPO guidance on EU trade mark protection and UK comparable rights can be found here.

UK IPO guidance on EU design protection and UK comparable rights can be found here.