22 September 2021
30th September 2021 is an important date on the calendar set in the Withdrawal Agreement concluded between the European Union and the United Kingdom regarding the protection of EU trademarks and designs. We invite you to review six fundamental questions to assess if you have taken the appropriate actions to maintain your rights in the UK after BREXIT:
1. Have I appointed a UK agent as representative of my comparable trademarks generated as of January 1st 2021? This is not mandatory but recommended. If you are a client of H&A, we have taken care of this at no cost to you.
2. Have I monitored the EU trademarks applied for in 2020 which registration is still pending in 2021? In such case, have I applied for registration in the UK and maintained their original priority? Their expiration is next 30th September 2021. As an H&A client we asked you about this a few months ago and reminded you a week ago. Please check that you have replied and instructed us to act on this request.
3. If I am not interested in having my EU trademark registered in the UK, have I given instructions not to register a comparable trademark in the UK?
4. If I have entered into a license agreement: (a) have I notified the licensee of the existence of comparable marks in the UK, and (b) have I amended, if necessary, the license agreement to include the new UK mark(s)?
5. Have I given instructions to register the license agreement in the comparable mark created with the UKIPO?
6. Am I using the comparable mark in the UK? If not, I should consider extending use to that territory if I do not want it to eventually lapse and cancel its registration.
If you read this after 09/30/2021, not all is lost for you:
– Your current EU representative will be appointed as your new UK trademarks’ representative for their first 3 years. We do recommend appointing a UK agent as soon as possible, as we have already done with our clients and indicated in question “1”.
– Even if you do not answer “yes” to question 2, bear in mind that you can apply for UK trademarks identical to those you have at EUIPO any time, although these will no longer benefit from the EU trademark priority.
– The comparable UK mark will be in force at no cost until it is due for renewal. If your answer to question 3 is “no”, the UK registration will simply lapse.
– If I have entered into a license agreement affecting the comparable mark, any of the actions relating to that agreement referred to in questions “4” and “5” can be taken later. However, it is advisable not to delay this more than necessary.
– You can initiate use of the comparable mark in the UK at any time, preventing third parties from successfully cancelling it due to non-use, as long as a revocation action has not been initiated. Thus, it is important to do it as soon as possible.
If you have any questions and we can help you, please do not hesitate to contact H&A at the following e-mail address marcas@herrero.es
Comentarios
No Comments