Deadline looms for pending EU rights

19th Aug 2021

Earlier UK filing dates for some 70,000 trade marks are still eligible to claimed with the deadline just six weeks away.

Registered trade mark symbol on a board

Owners of the 78,000 trade marks which were pending at the EUIPO at the end of the Brexit transition period on 31st December 2020 have until 30th September 2021 to file an equivalent right in the UK and claim the earlier EU filing date. 

So far, just over 8,000 of these have been registered in the UK, leaving a nearly 70,000 which could be filed over the coming six weeks. 

The UK IPO has previously warned that if too many design and trade mark rights holders leave it until the end of September to file, they will experience delays in receiving examination reports.

So far this year (January – June) the UK IPO has received an average of 17,000 trade mark applications a month, meaning 70,000 would amount to several months’ worth of applications in one go, in addition to its usual filings. 

The process

Under Article 59 of the Withdrawal Agreement between the United Kingdom and the European Union, holders of EU Trade Marks and Registered Community Designs that were pending on 1st January 2021 can file for a UK right and claim the earlier filing date of the EU trade mark or design.

Holders 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 30th 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

If holders apply 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

If the details of the application do not match those of the corresponding EU application, it will not be possible to claim the earlier EU filing or priority dates.

By submitting the application within nine months after the end of the transition period, the UK IPO will then:

  • Treat the pending EU application as a UK application
  • Examine it under UK law

The usual UK fees apply.

Click here for more information

Thank you to Clarivate for providing the data.

Graph showing the numbers of re-filed and pending EUTMs

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