Update – International trade mark registrations in the UK after Brexit

15 September 2020

Following on from our bulletin of 2 April 2020, the UK Government has recently released further guidance about how the end of the transition period on 31 December 2020 will impact holders of international trade marks under the Madrid Protocol that designate the EU.

In its most recent guidance, the UK Government has advised that:

  • Every international registration (IR) designating the EU that was protected on 31 December 2020 will automatically have a corresponding national UK trade mark created and recorded with the UK IP Office (UKIPO).These registrations are completely independent of the EU trade mark from which they originally stemmed, are governed by UK law, and must be managed directly (eg renewed) with the UKIPO. The UK marks can be assigned and licensed separately from the original IR (and may also be separately challenged);
  • There is an option for existing EU trade mark holders (including those obtained as part of an IR) to opt out of having a comparable UK trade mark. If a holder chooses this option, the IR will be treated as having never existed under UK law;
  • Holders of an IR designating the EU that is pending before the EU IP office EUIPO (ie has not been refused or protected by EUIPO) on 1 January 2021, or is filed before 31 December but recorded on the International Register after 1 January 2021 will be able to apply for a national trade mark registration in the UK with UKIPO for a period of 9 months;
  • The number allocated to the comparable trade mark will be the last 8 digits of the IR prefixed with UK008. This will provide users with a means for identifying UK rights created from IRs and distinguishing them from existing UK trade marks; and
  • In the UK (as in Australia), trade marks are vulnerable to removal if they are not used for a defined period of time by holders. UKIPO has indicated that any use of a trade mark in the EU (whether or not in the UK) prior to 1 January 2021 will count as use of the comparable UK trade mark registration that is created (however after this date, use outside the UK will not be taken into account).

Once the transition period has ended, holders of IRs are entitled to subsequently designate (add) the UK onto their existing IR even if it already includes the EU, and that EU designation resulted in a national UK trade mark as a result of the transitional arrangements. If there is such a subsequent designation of the UK, that will then take the place of the comparable domestic UK registration in the UKIPO’s trade mark register, and will allow the holder of the IR to again utilise the convenience of central management via WIPO. However, such a subsequent designation will be treated as a new application in the UK, and will therefore be examined according to local requirements and published for opposition purposes (unlike the automatically created UK trade marks resulting from existing EU designations of IRs which will not undergo such processes).

Australian holders of existing IRs designating the EU who eventually become the owners of a corresponding national UK trade mark will therefore in due course need to make a decision as to whether or not to subsequently designate the UK, in order to again receive the benefits of central management via WIPO for their mark. Whether or not to do so will largely turn on whether filing such a fresh application could result in the mark not ultimately proceeding to final registration in the UK as a result of obstacles being raised at either the examination or opposition stages. Such obstacles may mean that relying on the transition-created UK registration is the safer option (even though it requires more administrative work to manage).

We are able to assist by advising on any potential issues that could arise in the event of an IR or subsequent designation in the UK, and making recommendations on the best brand management strategies in the UK moving forwards. Please contact a member of our IP, Technology & Media team should you require any such assistance.

This article was written by Luke Dale, Partner and Niomi Abeywardena, Special Counsel.


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