Happy New Year to all our readers!
We are very pleased to start the new year with some good news to report.
What has happened?
As many readers will already be aware, at the end of December 2020 the transition period ended between the UK and the EU.
Thus, EU TMs and Registered Community Designs no longer have any legal effect in the UK and cannot be enforced before the Courts in the UK.
However, the UK agreed with the EU that at the end of the transition period it would automatically (and free of charge to EUTM and RCD owners) create new equivalent rights, called ‘Comparable UKTMs’ and ‘Re-Registered UK Designs’, thus giving continuing legal coverage and protection in the UK to owners of registered EUTMs and CRDs as of 11pm on 31 December 2020.
The CEO of the UKIPO has announced this week that it has successfully finished this project.
Tim Moss (UK IPO CEO) said:
“I am really pleased to confirm that we have successfully added two million ‘comparable’ registered rights to the UK registers and our systems are working well. Many thanks to our teams and our partners for working so hard over the last four years in preparation for this moment.”
Holders of international trade marks and designs that designated the EU as of the end of the transition period have also had equivalent rights created on the UK register.
What do you need to now?
Readers should note that EUTM and RCD applications that were filed but not registered at the end of the transition period are not automatically protected by an equivalent UK application. However, applicants can apply for registration of the same trade mark or design in the UK by the end of September 2021, and if they do they will keep the filing date of the EU application. Please contact us if you would like assistance in doing so.
Also, the UKIPO recently announced some changes with regard to what address for service is required in order to communicate with the UKIPO for the purposes of proceedings relating to TMs and Registered Designs in the UK.
In summary, the owners of new Comparable UKTMs and Re-Registered UK Designs are not obliged to have a UK address for service until 1 January 2024. However, we recommend that they designate a UK address for service ASAP, so as to make sure that they receive letters promptly from the UKIPO and have sufficient time to action them (for example, the UKIPO might notify an owner of a Comparable UKTM about a 3rd party UK TM application that they might want to oppose and they would not want to miss the opposition deadline due to not receiving the letter until close to the deadline, not giving them sufficient time to take local legal advice in the UK and then proceed accordingly).
If an owner wants to appoint us as the address for service for any new Comparable UK TM or Re-Registered UK Design then they just need to let us know and we can arrange this for them. We make no charge for being appointed.
Owners of equivalent rights created from international trade marks and designs that designated the EU as of the end of the transition period do not benefit from the exemption of not needing an UK address for service until 1 January 2024. If revocation or invalidity proceedings are filed at any time from now onwards against the equivalent right and there is no UK address of service provided by the owner of the equivalent right, the UK IPO will consider the case as undefended. Thus, owners of such rights need to designate a UK address for service sooner, rather than later.
Finally, please note that applicants for new UKTMs and UK registered designs filed from now on need an address for service in the UK before the UK IPO will process the application. Addresses in the EEA are no longer accepted.