On 1 January 2021, protected international trade mark registrations designating the EU will no longer be valid in the UK.

On this day these rights will be immediately and automatically replaced by UK rights.

If you own an existing right, you do not need to do anything at this stage.

Comparable trade mark (IR)

Creation of the comparable UK trade mark

For all protected international (EU) trade mark designations we will create comparable UK trade marks, which will be recorded on the UK register.

International trade mark registrations protected in the EU under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021.

To address this, on 1 January 2021 we will create a comparable trade mark (IR) in relation to each international (EU) trade mark designation which has protected status immediately before 1 January 2021.

Each new UK right will be treated as if applied for and registered under UK law, and may be challenged, assigned, licensed or renewed separately from the original international registration.

If you designated the EU in your international application, the filing and registration date of your comparable trade mark (IR) will correspond to the date of your international registration.

This date will also apply for the purposes of future UK renewal.

Comparable trade marks will be created at no cost to the holder of the international trade mark, and we are ensuring that minimal administrative burden will be placed upon the rights holder.

Effect of international (EU) subsequent designations

If you have designated the EU more than once in your international registration (IR) (for example, in your original application and through a later-filed subsequent designation) we will create a comparable trade mark (IR) for each designation that has been protected in the EU.

This means that after 1 January 2021 you may hold multiple comparable UK trade marks corresponding to a single international registration.

Where multiple comparable trade marks are created from a single international registration, each right will be independent.

In all cases, the filing and registration date accorded to the comparable trade mark (IR) will correspond to the date on which protection in the EU was conferred.

Where an EU designation was obtained as part of an application for an international registration, the filing and registration date of the resulting comparable trade mark (IR) will correspond to the date of the international registration.

However, where EU protection was obtained as a result of a subsequent designation, the relevant date of the resulting comparable trade mark (IR) will be the date on which your request for subsequent designation was recorded in the international register.

In all cases, the date of completion of the registration procedure recorded against your comparable trade mark (IR) will be the publication date of the EUIPO bulletin confirming that EU protection was not refused.

Changes to international trade mark registrations after 1 January 2021 (Part 2)

Source: GOV.UK