Tuesday, 19 January 2021 12:44

“Brexit” Trademark Rights and the Clone Wars

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The United Kingdom (“UK”) formally separated from the European Union (“EU”) as of December 31, 2020.  As such, starting January 1, 2021, the landscape of trademark protection across Great Britain and Northern Ireland is rather complicated.  Marks registered at the national level in the UK are not affected, but many brand owners have registered their marks exclusively through the EU Trade Mark (“EUTM”) system, previously known as the Community Trade Mark (“CTM”), with the expectation that protection would extend to the UK.  Others have registered their marks through the International Registration/ Madrid Protocol system, obtaining extensions to the EU, which also contemplated coverage in the UK.  However, as of January 1, 2021, EUTM registrations and extensions will no longer provide trademark rights in the UK.

In order to ease the transition, the UK is automatically creating a “clone” UK trademark registration corresponding precisely to the details of each EUTM registration and extension.  It is expected that some 1.4 million clone UK registrations will be granted through this process, thereby replicating trademark rights enforceable in the UK.  They will be accorded the same filing, priority, seniority, registration, and renewal date as the EUTM registration. No additional government fees will be due at the time of such grant, but a clone UK trademark registration will be due for separate renewal at the same time that the EUTM registration would be due for renewal, thereby requiring payment of additional fees at that time to keep the clone UK registration in force.

Notably, clone UK trademark registrations will be created only for EUTM registrations and extensions granted on or before December 31, 2020.  If a brand owner has only a pending EUTM application as of that date, a similar cloning protocol is available, but it is neither automatic nor free.  Specifically, a separate UK trademark application must be filed with an appropriate priority claim to the EUTM application by the deadline of September 30, 2021.  Additional government fees will be due and the UK application will undergo the usual examination process regardless of the EUTM application’s examination status.  Failure to exercise this option will result in a loss of priority rights vis-à-vis prior UK registrations and pending applications.

Pending trademark opposition and cancellation proceedings in the EU Intellectual Property Office (“EUIPO”) also require close attention.  EUTM registrations, extensions, and pending applications that are the subject of non-final actions in the EUIPO may be candidates for cloning into UK registrations and applications, thereby requiring separate oppositions and cancellation actions in the UK.  Let the clone wars begin!

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John Malloy, III

As the Partner overseeing the Firm’s Intellectual Property Litigation and International Tradmark Portfolio groups, Mr. Malloy is Board Certified as an Expert in Intellectual Property Law and concentrates his practice on Trial and Appellate Litigation. He also focuses on International Portfolio Management, filing trademark applications and directing enforcement proceedings around the globe. Mr. Malloy taught for nearly a decade as an Adjunct Professor of Intellectual Property Law at St. Thomas University Law School. He earned his bachelor’s degree from Vanderbilt University and his law degree from the University of Miami. During his tenure as the Chair of the International Trademark Association’s Model State Trademark Bill from 2003 to 2007, Mr. Malloy oversaw the passage of trademark legislation in a half dozen states and personally spear-headed the enactment of Florida’s present trademark statute, which became effective in 2007. In 2009 Mr. Malloy was named the Chairman of the DCBA Intellectual Property Committee.