Brexit and EU Trade Mark Oppositions - Update

Death of Her Majesty Queen Elizabeth II

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Death of Her Majesty Queen Elizabeth II

The staff at Franks & Co were saddened to learn of the death of Her Majesty Queen Elizabeth II. Our thoughts are with His Majesty King Charles III and the rest of the Royal Family.

The United Kingdom is now officially in a period of mourning until after the Queen’s state funeral which is to be held on Monday 19 September. Normal day-to-day business will continue throughout this period.

The UK government has declared the day of the funeral to be a national Bank Holiday, so the United Kingdom Intellectual Property Office will be closed on Monday 19 September.

The United Kingdom Intellectual Property Office’s official guidance on bank holidays is given below:

The office is deemed to be closed on weekends, Good Friday, Christmas Day and all England and Wales bank holidays for all types of business, except for the filing of new applications not claiming priority. If documents are filed for these types of business at times when the office is deemed to be closed, they will receive an official filing date of the next working day.

Any official time period which expires on a weekend or any other day on which the office is closed is extended to the next working day.

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Following our article of February 07, 2020, concerning Brexit, the Transition Period and Intellectual Property, we provide the following update with regards to the effects of Brexit on EU trade mark oppositions.

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From January 01, 2021, registered EU trade marks will no longer protect trade marks in the UK, but under the Withdrawal Agreement Act, the UKIPO will automatically create a comparable UK trade mark registration for all right holders with an existing EU trade mark registration on December 31, 2020.

If there is an opposition pending against an EU trade mark application on December 31, 2020, a comparable UK trade mark application will not be automatically created.

Any oppositions against EU trade mark applications still pending January 01, 2021, and which are based solely on UK rights will be dismissed by the EUIPO for lack of valid basis. Each party will be ordered to pay their own costs.

For any oppositions against EU trade mark applications still pending January 01, 2021, based on UK rights and an EU trade mark registration or other EU national state rights, the grounds based on the UK rights will be dismissed but the opposition will proceed based on the EU registration and/or other EU national state prior rights.

For all EU trade mark applications which are still pending after December 31, 2020, a new UK trade mark application can be filed to continue equivalent rights in the UK. If the new UK trade mark application is filed within nine months of January 01, 2021, the new UK filing will retain:

• The earliest filing date of the European trade mark application
• Any valid priority or UK seniority claims of the European trade mark application

Once the re-filed UK trade mark application has published, it can be opposed following the usual UK trade mark opposition procedure.

For specific advice regarding your intellectual property rights, please contact us directly.

Georgina Bagnall
Georgina.bagnall@franksco.com

 

Article Published September 18, 2020