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Amendments to Trademark Laws

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Jan 14, 2021 (Newsletter Issue 1/21)
United Kingdom
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Key IP Changes from 1 January 2021

On January 1, 2021, the transition period has ended. European Union laws and regulations are no longer applicable in the UK. IP rights with unitary validity throughout all EU Member States are no longer effective.

The government of the United Kingdom provides key information how the IP system and Intellectual Property Office (IPO) will now operate. Key changes from January 1, 2021 are the following:

Legal representatives
UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO).

UK address for service
An address for service in the UK (includes the Isle of Man), Gibraltar or the Channel Islands is required for new applications and new requests to start contentious proceedings before the IPO. This applies to all registered IP rights (patents, trademarks, and designs).

Customs Enforcement
IP right holders are advised to check their existing Application for Action (AFA) to ensure that they are still valid.
From January 1, 2021, UK national and EU Customs AFAs granted by the Customs authorities in the UK continue to remain in place in relation to the UK only.

Any EU AFAs granted by the Customs authorities of another EU Member State no longer cover the UK. EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU after January 1, 2021.

From January 1, 2021, UK brand holders can still apply for and hold EU trademarks (EUTMs). However, EUTMs are valid in the 27 EU Member States only and no longer in the UK.

EU Trademarks (EUTM)
From January 1, 2021, the IPO will create a comparable UK trademark for every registered EU trademark (EUTM).

No certificate of registration is issued but owners of this new right are able to access the information online or obtain a certified copy of the registration. The comparable UK trademark is a fully independent UK trademark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.

Holders of applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection.

International Registrations designating the EU
From January 1, 2021, the IPO will create a comparable UK trademark for every International Trademark Registration designating the European Union. Each new comparable trademark (IR) is treated as if applied for and registered under UK law. As such, it may be challenged, assigned, licensed or renewed separately from the original international registration.

Holders of International Registration designating the EU which are pending on 1 January 2021, will be able to apply to register a UK trademark in the nine months after 1 January 2021 and retain the filing date of the pending EU designation.

More detailed information can be seen on IPO's Website here