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Amendments to Trademark Laws

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Sep 10, 2020 (Newsletter Issue 14/20)
United Kingdom
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Guidance on International Registrations Designating EU

The UK Intellectual Property Office (IPO) provides guidance on how international registrations designating the European Union will be protected in the United Kingdom after the end of the transition period.

- Comparable trademarks (IR)
IPO informs that on January 1, 2021, protected international registrations designating the EU will no longer be valid in the UK. On this day, these rights will be immediately and automatically replaced by UK rights at no costs. IPO will create comparable trademarks (IR), which will be recorded on the UK register.

Each new UK right will be treated as if applied for and registered under UK law, and may be challenged, assigned, licensed or renewed separately from the original international registration.

The filing and registration date the comparable trademark (IR) will correspond to the date of the international registration. This date will also apply for the purposes of future UK renewal.

- Effect of international (EU) subsequent designations
Holders who have designated the EU more than once in their international registration (IR) will receive comparable trademarks (IR) for each designation that has been protected in the EU. Where multiple comparable trademarks are created from a single international registration, each right will be independent.

In all cases, the filing and registration date accorded to the comparable trademark (IR) will correspond to the date on which protection in the EU was conferred.

Where an EU designation was obtained as part of an application for an international registration, the filing and registration date of the resulting comparable trademark (IR) will correspond to the date of the international registration.

However, where EU protection was obtained as a result of a subsequent designation, the relevant date of the resulting comparable trademark (IR) will be the date on which your request for subsequent designation was recorded in the international register.

In all cases, the date of completion of the registration procedure recorded against your comparable trademark (IR) will be the publication date of the EUIPO bulletin confirming that EU protection was not refused.

- Renewals and restoration
For future renewals, comparable trademarks (IR) that have been created from a protected EU designation filed as part of an international application will inherit the existing renewal date of the corresponding international registration.

Where created from an EU subsequent designation, the comparable mark will adopt the date of that subsequent designation for the purpose of future renewal.

The UK renewal date for comparable trademarks (IR) that correspond to an EU subsequent designation will be different from that recorded against the corresponding international registration.

IPO provides further information on numbering of comparable trade mark, pending applications and much more here