UK trade mark Conversion: Last Call September 2021

Those interested in registering their EU-wide IP rights with the same filing dates and priority rights in the UK still have the opportunity to do so until the end of September 2021. EU trade mark and design applications that were still pending on 1 January 2021 can claim UK trade marks with EU priority – until 30.9.2021.

Despite political debates just at the end of the Brexit negotiations between the EU and the UK, the UK has already enabled a simple way last year to guarantee the protection rights for EU-wide trade marks and designs that previously applied to the UK, even after Brexit. In a so-called “transition period”, EU-wide trade marks and designs were converted into compatible UK trade marks and UK designs in a simple and even automated way, so to say they were “cloned”.

In this conversion, the UK attached importance to the fact that the term of protection and maturity of the EU protection rights is exactly the same as in the new UK protection rights for designs and trademarks. Accordingly, the application data registered in the corresponding EUTM (European trade mark) or RCD (Registered Community design) was taken over, as well as the previous priority and/or seniority data.

However, the new UK trade marks and UK designs will of course be subject to fees in the UK, in addition to the fees for IP rights in the EU. In practice, this means that renewal fees will be due twice and at the same time, as usual for the EU IP right and additionally the fees for the new UK IP right.

Fees for UK trade marks and UK designs

The UK currently charges the following fees for trade mark registrations in the UK:

Trade mark application £170
Trade mark renewal (one class) £200
Trade mark renewal (additional class) £50

The UK currently charges the following fees for design registrations:

Single application £50 for 1 design (online format), £60 for 1 design (paper format)
Collective application £70 for up to 10 designs (online format)
20 for up to (and including) 10 additional designs included in the application (online format)
60 for the first and 40 for each additional design included in the application (paper format)

Since all registered and published EUTMs and RCDs were automatically converted into UK trade marks and UK designs last year, the owners of these IP rights decide whether to take advantage of the offer of conversion into UK IP rights and actually maintain the UK IP rights by paying – or not paying – the UK fees.

The situation is different for EU IP rights that were pending on 31.12.2020, because they were not automatically converted into UK IP rights. It is therefore not surprising that many of the trade marks and designs pending before the EUIPO on 31 December have not yet been filed in the UK. Some rights holder have made a conscious decision not to do so, but some may have so far overlooked the fact that they have to actively take care of the conversion into UK IP rights. The UK IPO is currently pointing this out and encouraging the short-term filing of UK trade marks and UK designs as part of the conversion of IP rights offered.

Last call for conversion: 30 September 2021

Anyone wishing to transfer their existing priority and/or seniority data from EU IP rights to their UK counterparts (and who had pending IP rights to an EUTM or RCD at the turn of the year) must note that this conversion of EU IP rights to UK IP rights is only possible until 30 September 2021. This is because the “transition period” for EU IP rights that were pending at the time of the Brexit has been extended until this date. On the one hand, this concerns European trade mark and design applications that were pending at the EUIPO on 31 December 2020 – and, above all, international registrations for trade mark protection in the EU (IR trade marks).

After 30 September 2021, trade mark and design applications in the UK will of course still be possible at any time and also desired by the UK. However, these will then be classified as new registrations and can no longer convert priority or application data from older EU IP rights into the new UK IP right.

Invalidity proccedings: end of transition period decisive

Incidentally, the “Last Call” around 30 September 2021 only refers to the conversion of EU-wide trade marks and designs. For invalidity proceedings, for example, the end of the transition period – i.e. 31.12.20 – is decisive. This is because in cases where a registered Community design (RCD) or an EU trade mark (EUTM) was the subject of ongoing invalidity proceedings at the end of the transition period (on 31.12.20) and is subsequently declared invalid, the new UK IP right “cloned” in the UK is also automatically declared invalid to the same extent.

No automatic transfer of licences

Licences and security interests registered against an EUTM or RCD at the EUIPO are not automatically transferred to the UK register. Although a comparable UK registration is deemed to apply to such EU licences, with the caveat that if the parties agree otherwise. However, licences and security interests under an EUTM or a RCD must be re-registered at the UK IPO.

Incidentally, post-Brexit IP protection has certainly been given attention in the new EU-UK trade agreement, with the TCA coming into force on 1 May 2021. Please read our summary HERE. IP protection is even mentioned as a separate sub-chapter – but everything is still not clarified… Ultimately, much will depend on how the planned dispute settlement mechanism mentioned in the TCA will work in practice.

Conversion and defence of your IP rights

You would like to take advantage of the offer of conversion to UK IP rights, but have little time to take care of it?

Our patent and trade mark law firm will be happy to take care of your trade mark or design applications or activities for patent protection, also in the UK. Our attorneys have many years of expertise in the entire field of intellectual property law and are entitled to represent you before any court – in Germany and also internationally.
Please contact us if you are interested.