Don’t let ‘pending’ get you panicked!

On 17th October 2019 the Intellectual Property Office (IPO) published updated guidance for businesses and organisations holding EU trade marks (EUTM) after the UK leaves the EU. This brief note will focus on what will happen if your EUTM application is still marked as ‘pending’ following exit day.

Pending applications to the EUIPO

For those who already hold EUTMs, on exit day, the IPO intends to automatically grant, free of charge, a comparable UK trade mark to all right holders with an existing EU trade mark. The intention here is that existing EUTM registrations will still offer protection in EU member states and the UK.

This is not the case if your EUTM application is still pending on exit day.  However, with a pending application on exit day,  the IPO plans to offer rights holders the ability, should they wish, to file a new UK trade mark application within 9 months and back date it to the earlier filing date of the pending EUTM application as if they were applied for at the same time. Note, the filing date is of great importance as it ensures that your application has priority over those made for the same or a similar mark following the date of your application. As such, if you do not register your pending EUTM as a UK trade mark in the 9 months after exit day, you run the risk of losing priority and consequently losing your trade mark if a third party were to file for an identical or similar mark within those 9 months despite your EUTM application.

To benefit from this priority period, when making the application to the IPO, the rights holder must ensure that the UK application is identical to the original EUTM application i.e. it relates to the same trade mark, is owned by the same entity and covers the same categories of goods and/or services as the EUTM application.

Unlike with the comparable UK trade mark, in these circumstances, you will be required to pay the usual IPO filing fees.

Warning

If you intend on filing a ‘standalone’ UK trade mark application, i.e. one that does not correspond with a pending EUTM application in the 9 months after exit day, it is important to be mindful that someone could file a UK application after yours and claim the earlier date of their corresponding EUTM application. Where that happens, the applicant filing with a corresponding EUTM application would take priority and consequently be granted the trade mark. To avoid this unfortunate occurrence, we recommend that you consider instructing searches of the EU Trade Mark Register for any EUTM applications that were pending on exit day or that hold a filing or priority date earlier than yours.

For the full briefing note follow this link: https://www.gov.uk/guidance/changes-to-trade-mark-law-after-brexit.

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Insight article byCordelia Payne

Cordelia Payne

Partner

+44 (0)7773 336 902
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Insight article byKate Francis-Hughes

Kate Francis-Hughes

Trainee Solicitor

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