UK IPO's warning about priority filings

21st Jul 2021

Just ten weeks remain until the filing deadline for UK priority applications based on rights that were pending at the EUIPO on 1st January 2021.

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The Intellectual Property Office (UK IPO) is warning 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.

If you had a pending right at the European Union Intellectual Property Office (EUIPO) on 1st January 2021, you can file an equivalent UK right at the UK IPO and claim the earlier filing date of the EU right. The deadline for making these applications is 30th September 2021.

The UK IPO is urging holders of such rights to file these applications as soon as possible. This will allow the office to examine cases in a timely manner and will help effectively manage the workload.

If a majority of rights holders wait until the end of the period to file these cases, it could increase the timeframe for the issuing of all examination reports.

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.

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