UK Clearance Searching Post-Brexit – What you need to know

For decades, trade mark clearance searching in the UK has required the consideration of three registers:

• The UK Register
• The International Register (for designations of the UK and European Union Trade Mark – “EUTM”)
• The EUTM Register

With the UK now having left the EU, the EUTM Register no longer covers the UK. While practitioners might welcome a reduction in searching complexity, things are not quite so simple!

Transitional arrangements resulted in the UK Intellectual Property Office (“UKIPO”) cloning existing EUTM registrations (as at the end of last year, the point of Brexit) into UK comparable trade mark registrations. These comparable trade marks are now part of the UK Register.

In the case of EUTM applications that were pending at the point of Brexit, there is priority period, lasting up to and including 30 September 2021 in which corresponding UK trade mark applications can be filed, preserving the EUTM filing date and any valid international priority applicable to the EUTM. Taking advantage of this priority period will result in a UK application that will be examined according to UK Law.

Given the potential for pending EUTM applications resulting in UK applications, between now and 30 September 2021, any UK search must of necessity take these into account.

In addition, there seems to be a measure of delay in the UKIPO providing details of the new comparable trade mark registrations to the companies that provide searching software. As a safety measure, such companies are preserving their searching packages in the same format as before Brexit, namely to include the EUTM Register in full, at least until the September priority deadline passes and probably until the end of the year.

When comparable trade marks (cloned from EUTM registrations) are encountered in UK search reports it may give rise to new perspectives on commercial risk assessment. While such registrations are just as valid as UK registrations and will for a time be able to rely on usage outside the UK (but within the EU), the question may well be asked in particular cases whether these rights are likely to be valued as much as the EUTM itself. Are they equally likely to be enforced if the owner is based in the EU and does not trade in the UK? Are they equally likely to be defended against a non-use attack?

There may be opportunities for owners of UK registrations that were living in the shadow of earlier EUTMs, to legitimise their position by filing a non-use cancelation action against the comparable registration.

No doubt other opportunities (and challenges!) will present themselves.

We would recommend that clients include a search of the EUTM Register in their UK searching for the time being, at least until 30 September 2021.

We would also recommend that owners of existing UK registrations that might have had earlier EUTMs shadowing their validity, review the comparable registrations resulting from those EUTMs with a view to potential revocation.

Please contact Dewdney Drew to discuss your clearance search needs.