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Trade Mark Replacement – What is Replacement and what are your options post-Brexit?

Brexit has led to many changes in relation to trade mark protection, altering filing strategies and searching, but there are other aspects of trade mark protection which are now coming into focus as a result of Brexit.

Comparable UK national trade mark registrations have been created by the UK IPO from EU trade mark registrations or EU designations under International Registrations to enable trade mark owners to retain their trade mark rights in the UK and not suffer a loss of rights due to Brexit.

One of the side effects of the creation of comparable trade mark registrations derived from the existing EU designations under International registrations is that the comparable UK registration created is outside the International registration.  The International registration system is governed by the World Intellectual Property Office (WIPO) in Geneva and it was not within the UK Government’s power to have a UK designation created under the existing International registrations gave protection in the EU through a protected designation.

While enabling IP holders to maintain the UK portion of rights from their EU designation, it has meant that, as a national UK registration, the benefit of the International registration enabling the ease of management of the portfolio by undertaking change of names, assignments and renewals all directly for all of the designated countries through one application with WIPO is lost.  Separate actions are required for the created UK registration before the UK IPO.

Many IP holders choose the International registration route for precisely the reason of ease of the long-term management of their portfolio.  There is now therefore significant more interest in the long established principle of replacement under the International registration system.  This allows the earlier filing date of a national UK registration to be maintained under the International registration system through a later designation of that country.

To do so the IP holder must designate the country in question under the International registration first.  Certain requirements must also be met:

  • Both the national or regional registration and the International registration must be for the identical mark and in the name of the same holder;
  • All of the goods and services listed in the national or regional registration should also be listed in the International registration in respect of the contracting party concerned;
  • The extension of the International registration to the contracting party (which can be a subsequent designation) should take effect after the date of the national or regional registration.

It acts as a type of seniority claim as seen in the EU trade marks system.  Earlier filing dates of the national right are thereafter maintained under the designation in the International registration.   While the system is referred to as “replacement”, the national registration is not automatically removed and will remain in force until its next renewal date.

The purpose of requesting replacement would be to allow the national registration to ultimately lapse thereby consolidating the renewal of the trade mark portfolio under the International registration.

Benefits of Replacement

For many IP holders it is the central management of their trade mark portfolio under the International registration system which is the main benefit.  However, in the long term there will also be a degree of cost savings with renewal costs.  It should be noted that in the immediate short term the designation of the UK under the International registration if a new subsequent designation would have to go through the prosecution to registration in the UK and further costs could arise because of this.

However, the newly protected UK subsequent designation that is the beneficiary of the replacement will have a new five-year grace period for use calculated from its date of protection in the UK and will also therefore be able to take advantage of the earlier priority or filing date of the UK national registration.

If replacement is of interest, it should be noted that it should be requested in advance of the renewal date of the UK national registration to enable sufficient time for the request to be processed.

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