Guidance: Changes to international trade mark registrations

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.

Numbering of comparable trade mark

The number allocated to the comparable trade mark (IR) will be the last 8 digits of the international (EU) trade mark prefixed with UK008. This will provide users with a means for identifying UK rights created from international registrations and distinguishing them from existing UK trade marks.

We are aware that the EUIPO uses two numbers to identify international (EU) trade marks. Please use the number that is prefixed with “W” when searching for your comparable right, leaving out the “W” and including our prefix. (unless the right is a subsequent designation that has been assigned).

The following examples demonstrate how comparable UK trade marks (IR) will be codified:

WIPO	EUIPO	Comparable UK trade mark
917273 (no sub designation, no partial assignment)	W00917273	UK00800917273
917273A (no sub designation, partial assignment)	W00917273A	UK0080917273A
1133775 (Sub designation, no partial assignment)	W11133775	UK00811133775
421058A (Sub Designation & partial assignment)	W10421058A	UK0080421058A

Pending applications

If you hold a pending EU designation at 11pm on 31 December 2020, you will be able to apply to register the same trade mark in the UK, and still benefit from a deemed earlier filing date corresponding to the pending EU designation.

For the vast majority of cases, in order to do so you will need to apply to register the UK trade mark on or before 30 September 2021.

If you have submitted an application for an international application which designates the EU and the date given to the international registration is a date before 31 December 2020, you must apply no later than 30 September 2021, nine months after the end of the Transition Period.

Similarly, if you filed a subsequent designation for protection in the EU and the date on which it was recorded in the International Register is a date before 31 December 2020, you must also apply no later than 30 September 2021.

There may be a small number of EU designations pending at 11pm on 31 December 2020, where the date given to the international registration designating the EU or the date the subsequent EU designation was recorded in the International Register, was a date on or after the 31 December 2020.

In such cases, the nine-month window to re-file the mark in the UK begins on the date given to the international registration or the date the subsequent designation was recorded in the International Register.

This means that the option to retain the earlier filing date for such applications may extend beyond 30 September 2021.

Where a UK application claiming the earlier international (EU) date is filed at IPO within either of the two nine-month periods referred to above, the application will be examined under UK law.

Our digital and paper forms will be amended to include a new section for claiming the earlier date of the corresponding international registration.

These applications will be treated as a UK trade mark application. They will be examined under UK law. In these circumstances, the standard UK fee structure will apply. Further information on trade mark fees is available.

Users should note that international (EU) trade marks that have been subject to a notice of refusal issued by the EUIPO prior to 1 January 2021 cannot be used for the purposes of claiming an earlier date when filing a corresponding UK application.

Pending applications to transform an international registration

If your international registration has been cancelled and you have filed a request to transform your international trade mark (EU) into an EU trade mark which is still pending at 1 January 2021, you may file a UK trade mark application.

Provided that your application is submitted to IPO within nine months after the end of the transition period, this being up to and including 30 September 2021, you will be able to claim the earlier date assigned to the EU designation.

Where the corresponding EU designation was protected at the time of its cancellation, the date that may be claimed for the UK application will be the date of the international registration.

Where EU protection was obtained through a subsequent designation, the date on which the request was recorded in the international register may be claimed for the UK application.

Where the EU designation was not yet protected at the time of its cancellation, you may claim the date of the international application. In the case of a subsequent designation, you may claim the date on which the request was recorded in the international register.

In all cases, if a priority claim under the Paris Convention was attached to your cancelled international registration, you may claim that date against your UK application. This will be effective for the purposes of determining which rights take precedence.

Opt out of receiving a UK comparable trade mark

If you do not wish to hold the new right, you may opt out of holding it.

Owners of protected international (EU) trade marks may opt out of receiving a UK comparable trade mark. They are able to do this through the same opt out mechanism as is being provided for holders of Registered Community Designs (RCD), international (EU) Designs, and EU trade marks.

If you wish to opt out, you will need to submit a short notice providing the number of the international registration together with details of any persons with a registered interest in the right.

The effect of such an opt out is that the comparable trade mark (IR) will be treated as if it had never been applied for or registered under UK law.

If your international registration contains more than one EU designation because of a subsequent request for protection, you will receive multiple comparable trade marks (IR).
In this scenario, a single opt out request will apply to all comparable trade marks (IR) held by the requestor. More information on opt out is provided in the section of this business
guidance dedicated to RCDs.

Trade mark-specific guidance on opt out is available.

Renewals and restoration

For future renewals, comparable trade marks (IR) that have been created from a protected EU designation filed as part of an international application will inherit the existing renewal date of the corresponding international registration.

Where created from an EU subsequent designation, the comparable mark will adopt the date of that subsequent designation for the purpose of future renewal.

The UK renewal date for comparable trade marks (IR) that correspond to an EU subsequent designation will be different from that recorded against the corresponding international registration.

As with comparable trade marks created from EUTMs, we will send renewal reminder notices to holders of comparable trade marks (IR) which are due to expire at any point after the six month period following 1 January 2021.

A new approach is being introduced to accommodate comparable trade marks (IR) that expire within the six month period following 1 January 2021.

Provision is also being made for international registrations that have expired within the six months prior to 1 January 2021 and which are still in their late renewal period.

Comparable trade marks which expire after 1 January 2021

Where your comparable trade mark (IR) expires within the period of six months immediately after 1 January 2021, we will send you a reminder renewal notice on the actual date of expiry (or as soon as is practicable after that date).

This notice will inform you that the registration of the comparable trade mark (IR) has expired, and that we will provide you with a further six month renewal period. This will run from the date of the notice.

You should note the following:

• this procedure equates to renewal of a comparable trade mark (IR) after its expiry date has passed
• the ‘late’ renewal of rights which have expired at any time within the six months after 1 January 2021 will not be subject to an additional late renewal fee
• where your comparable trade mark (IR) corresponds to an EU subsequent designation, its renewal date will be different from the renewal date accorded to the international registration
• where the ten-year anniversary of the date of your EU subsequent designation falls at any time after 1 January 2021, that date shall become your comparable trade mark’s renewal date. You will still be required to renew it at the IPO
• renewal of your corresponding international registration at WIPO will have no bearing on renewal of the comparable trade mark
• where an international registration’s renewal date falls after 1 January 2021, early payment of the renewal fee at WIPO, on a date prior to 1 January 2021, will have no effect in respect of the comparable trade mark (IR).
• any comparable trade mark (IR) with a renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action and fee. This will be regardless of whether a renewal action was taken on the corresponding international registration before 1 January 2021
• where the comparable UK right is not renewed, it will be removed from the register but may be restored at a later date in accordance with existing UK law

International trade marks which expire before 1 January 2021

We will also create a comparable trade mark (IR) from any international registration that has expired in the six months prior to 1 January 2021.

These UK rights will hold an ‘expired’ status, and their continued effect in the UK will be dependent upon late renewal of the corresponding international registration at WIPO.
You should note the following:

• where that registration has been subject to late renewal, and the holder has informed the IPO about such action, the late renewal of the international registration will have effect on the expired comparable trade mark
• this means that the comparable trade mark will be automatically renewed as a result of the international registration’s late renewal
• in this scenario, you will not be required to pay any renewal fees in respect of your renewal of the comparable trade mark (IR) which derived from the international trade mark
• where your comparable trade mark (IR) corresponds to an EU subsequent designation, it will inherit the date of EU protection for that designation. This date will be used for future renewals

Validity of ‘new’ UK expiry date

The ‘new’ UK expiry date adopted by the comparable trade mark will be redundant in the following circumstances:

• where the EU subsequent designation relates to an international registration that has expired in the six months prior to 1 January 2021 and has not yet been renewed, and
• where the international registration is still in its late-renewal period
• the UK expiry date will only become effective once the corresponding international registration has itself been renewed at WIPO

How this affects you will depend upon the dates of your international registration and EU subsequent designation. In some scenarios, you may be obliged to pay a UK renewal fee very soon after renewing your international registration.

Conversely, your comparable trade mark may enjoy nearly ten years’ protection before your first UK renewal is triggered.

Users should note that holders must inform the IPO that their corresponding international registration has been late-renewed at WIPO by sending an email to [email protected]. The notice must be submitted within nine months after the end of the transition period.

Failure to provide notification within that period will result in the comparable trade mark (IR) being removed from the UK register.

The comparable trade mark (IR) will be treated as if it had never been applied for or registered under UK law. This will be the case even if that international registration has been subject to late renewal.

Effect of priority and seniority claims

Priority date

A priority date claimed under the Paris Convention that has been recorded against the corresponding international (EU) trade mark will be inherited by the comparable UK trade mark.

The date of that priority claim will have effect where proceedings involve a comparable UK trade mark (IR) with a priority claim inherited from the corresponding international (EU) designation.

Seniority of a trade mark

Seniority is a concept which derives from EU legislation. It applies only to EU trade marks (EUTM), UK trade marks that have been converted from EUTMs, and international EU designations.

From 1 January 2021 it will also apply to the UK comparable trade marks
which derive from EUTMs or international trade marks (EU) which themselves claimed seniority of a trade mark.

It allows a business to consolidate their national registered trade marks into one single international (EU) designation (or EUTM).

It does this by retaining the ‘senior’ dates of those national rights and recording them against the international (EU) designation (or EUTM).

Where the national marks are surrendered or allowed to lapse, the owner is deemed to have the same rights as they would have if the earlier national mark(s) had continued to be registered.

Seniority can determine the effective date of an existing international (EU) designation. We have ensured that seniority claims based on earlier UK or international (UK) trade marks will be recognised.

The new law ensures that any seniority claim based on an earlier UK or international (UK) trade mark which has been recorded against an international (EU) designation will be retained by the comparable UK trade mark. The retention of existing priority and seniority dates in comparable UK trade marks will be automatic.

As the holder of an international (EU) right, you will not be required to inform us of any earlier effective dates. This is because filing, priority and seniority information will be automatically transferred onto the new UK right.

The UK application process will provide you with a means for recording priority and seniority dates for applications corresponding to a pending international (EU) application filed within nine months after the end of the transition period.

Certification and collective marks

As with conventional EU Trade Marks, we will create comparable UK rights from all EU certification and collective marks registered at EUIPO before 1 January 2021.
Certification and collective marks perform a different function to conventional trade marks.

Certification marks provide a guarantee that goods or services bearing the mark meet a defined standard or possess a particular characteristic.

Collective marks indicate that the goods or services originate from members of a trade association, rather than just one trader.

The registration of both certification and collective marks is subject to the registering authority’s approval of regulations governing how the marks are used.

These regulations must be available for third parties to view and, in the case of many International (EU) designations being treated as EU certification and collective marks, they will be in languages other than English.

As with conventional protected trade marks designating the EU, we will create comparable UK rights from all international (EU) trade marks which, for the purposes of the European Union Trade Mark Regulation, are treated as EU certification and collective marks, and which are protected immediately before 1 January 2021.

We will not automatically import onto the UK trade mark register the regulations governing use of those international (EU) rights.

We will also not request that the holder provide an English translation immediately after 1 January 2021. Instead, where you become the holder of a comparable UK certification or collective mark, we will contact you when we need to inspect the regulations (for example, where the mark becomes subject to proceedings).

Where the regulations are in a language other than English, we will at that point request a translation.

Failure to provide translated regulations will result in loss of the right.

Use and reputation

The new law ensures that any use of the mark in the EU, whether inside or outside of the UK, which has been made prior to 1 January 2021, will count as use of the comparable UK right.

For a national trade mark, an uninterrupted period of five years of non-use in the UK can render a mark vulnerable to challenge.

Applying this approach to comparable UK trade marks created on 1 January 2021, many of which will correspond to international (EU) trade marks that have never been used in the UK, would fail to provide sufficient protection for those new comparable rights.

It would likely lead to outcomes that are both unintended and unjust.

To address this issue, the new law ensures that any use of the mark in the EU, whether inside or outside of the UK, which has been made prior to 1 January 2021, will count as use of the comparable UK right.

Where the relevant five-year period includes time prior to 1 January 2021, use in the EU will be considered in assessing whether there has been use of the mark.

Where the period includes any time after 1 January 2021, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account.

In all cases, the five-year period of suspended use is activated by last use of the corresponding international (EU) trade mark or comparable trade mark.

Where that use was of the corresponding international (EU) trade mark, and it was made in the EU prior to 1 January 2021 (whether inside or outside of the UK), it will count for the purposes of the comparable trade mark.

A similar approach is being applied to the assessment of reputation.

In relation to the consideration of any time prior to 1 January 2021, reputation of the corresponding international (EU) trade mark, in the EU but not necessarily in the UK, will be considered for the purposes of the comparable UK right.

https://www.gov.uk/guidance/changes-to-international-trade-mark-registrations
Content Reproduced verbatim from the Website of the United Kingdom Intellectual Property Office (UKIPO) as permitted under their Terms of Use.