Last week, the Intellectual Property Office (IPO) announced that the 30th of September 2021 will be the deadline for customers filing a UK right and claiming an earlier filing date for EU trade marks and design applications.
Any customers with EU trade marks and design applications, that were pending on 1st January 2021, will be able to file for a UK right and claim the earlier filing date.
The IPO is encouraging holders of such rights to file these applications with them as soon as possible. An early application will help with early examination and allow time for refiling if necessary, as the deadline approaches.
What is the Criteria for Filing?
Article 59 of the Withdrawal Agreement between the UK and the EU states that customers can:
- Apply to register the same right as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021
- Claim the earlier filing date of the pending right
- Claim any valid international priority you had on the pending EU application, along with any UK seniority claims recorded against it.
The IPO have stated that if someone applies to register a pending right as a UK Trade mark, the application must:
- Relate to the same trade mark that was the subject of the EU right application
- Seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application.
It is important that the application matches the EU application, otherwise an applicant will not be able to claim the earlier EU filing or priority dates.
Once the application has been made, the IPO will treat the pending EU application now as a UK application. This will then allow it to be examined under UK law.