Related ServicesTrade Marks Designs IP Strategy & Management
Related PeopleRebecca Spence Ross Warren Corinna Hiscox Rachel Wallis
BREXIT UPDATE – RENEWAL FEES
After the end of the transition period, EU Trade Marks (EUTMs) and Designs (RCDs), including those based on International Registrations, will not cover the UK. The UK parts of those rights will be separated out, and cloned registrations generated at the UKIPO. The following provides an explanation of how this will affect renewal fees.
EU TRADE MARKS AND REGISTERED COMMUNITY DESIGNS
It will be necessary to pay renewal fees for the UK part of an EUTM or RCD in addition to the renewal fee for the remaining EU part of the right. The UK part of an EUTM or RCD which expires within the six months after 1 January 2021 may be renewed within the six month grace period without an additional late renewal charge. The UKIPO will send a renewal reminder notice to the holder on (or shortly after) the date of expiry; however, we encourage rights holders to take proactive steps to renew in the UK, rather than relying on the UKIPO’s notice.
If a renewal fee is due after 1 January 2021, but has already been paid at the EUIPO, the renewal fee will still be due on the comparable mark, or re-registered design, within six months from 1 January 2021. Paying early at the EUIPO will not avoid having to pay an additional UK renewal fee.
EUTMs and RCDs expiring during the six months prior to 1 January 2021 which are in the fine period can still be renewed, with fine, at the EUIPO and no renewal fee needs to be paid at the UKIPO.
INTERNATIONAL TRADE MARKS AND DESIGNS DESIGNATING THE EU
International trade marks and designs designating the EU, where protection has been granted before the end of the transition period, will no longer be protected in the UK after 1 January 2021. Comparable UK rights will be created for each international trade mark or design registration holding a protected status prior to 1 January 2021. These new UK rights will be treated as if applied for and registered under UK law and will need to be renewed separately from the international registrations at the UKIPO, rather than centrally at WIPO.
Comparable trade marks and re-registered international designs will retain the same renewal deadlines as the corresponding international registrations.
The UKIPO will issue renewal reminders for comparable trade marks and re-registered designs expiring during the six month period following 1 January 2021 on (or shortly after) the date of expiry. This notice will provide a further six month period in which to pay the renewal fees. No additional late fees will be payable.
If the International registrations are due for renewal after 1 January 2021, early payment of renewal fees at WIPO prior to the 1 January 2021 will have no effect in respect of the comparable trade marks or re-registered designs.
International registrations expiring during the six months prior to 1 January 2021 which are in the fine period can still be renewed, with fine, at WIPO and no renewal fee needs to be paid at the IPO.
The status of the comparable UK trade mark or re-registered design will show as ‘expired’ at the UKIPO until the late renewal has been paid at WIPO.
For EU trade mark subsequent designations, the renewal deadline for the comparable UK trade mark will be different from that recorded against the corresponding international registration.
If your international registration has been renewed at WIPO during the six month grace period, holders must inform the UKIPO of this by sending an e-mail to WIPOrenewaltrademarks@ipo.gov.uk or firstname.lastname@example.org within nine months of the end of the transition period, up to and including 30 September 2021. Failure to do this will result in the comparable trade mark or re-registered design being removed from the UK register and treated as if it had never been applied for or registered under UK law.
This update is for guidance only and should not be taken as legal advice. Should you have any questions on Brexit matters, please do not hesitate to contact us.