Avoid the loss of cloned UK trademark rights

0

Cloned UK trade mark registrations

The cloned UK trade mark registrations were created following the UK’s withdrawal from the EU and reflect all European Union Trademark (EUTM) registrations registered as of January 1, 2021. These UK clones are identical to all regard to the parent EUTM, from the mark itself to the classes of goods and services covered by the mark and the specification. This identity included the registration of the existing EUTM trademark agent or other representative as the service address for the UK clone in the register of the UK Intellectual Property Office (UKIPO).

From 1 January 2021, however, an address for service in the UK, the Channel Islands or Gibraltar is required for all new UK trade mark applications or to initiate new opposition, revocation or invalidity before the UKIPO. Brexit has not affected the ability of non-UK representatives to act before the UKIPO, but a growing number of trademark holders with rights in the UK are recognizing the value of engaging UK-based representatives.

This allows trademark owners to use the UK-based representative’s service address, and their particular expertise in dealing with the procedural particularities of their local trademark office can reduce portfolio management costs overall. . The UK address requirement for service will not apply to clone registrations before January 2024, but trademark owners can consider engaging a UK representative for these trademarks now.

This would allow trademark owners to place all of their UK trademark rights under the umbrella of one UK representative who can manage their portfolio globally. Crucially, it will also help to avoid the risk of loss of rights that the specific post-Brexit rules around the renewal of UK trademark rights create – and with which non-UK representatives may, understandably, be less familiar.

Risk of loss of rights

It is likely that a portion of UK clone registration owners will knowingly choose to allow their UK registrations to expire on the grounds that, despite having applied for EU protection, the UK was not a priority market and they have no continuing interest in the UK market, nor do they wish to pay to renew the UK clone in addition to their original EUTM registration.

Some overseas representatives may also not have alerted trademark holders to the split nature of the UK clone as early as the EUTM. The parent EUTM and the cloned UK trade mark are separate and independent rights and must be managed separately, including with regard to renewal. Seemingly unaware of this, some trademark owners only renewed the original EUTM registration, letting the UK clone registration expire by accident.

Data from UKIPO showing that the register has received an increase in formal requests to restore registrations proves that missed renewals are a significant post-Brexit issue. According to UKIPO, restores of clone records accounted for just under 29% of all restore requests in 2021, likely because very few newly created clones would have already expired.

Meanwhile, in the first half of 2022, some 48% of restorations operated were for post-Brexit clone recordings. Given that clones make up less than half of the UK trademark rights register, this suggests that a higher overall proportion of clone renewals require restoration due to unintentional failure on the part of owners or representatives of the brand – probably due to ignorance of the post-Brexit renewal rules.

The restoration process in the UK

Under section 43(5) and (6) of the Trade Marks Act 1994, a registration will be renewed if an application for renewal is made before the expiry date of the registration. If the registration expires, renewal is still possible within six months of the expiry date. This is called the “grace period”. If the renewal is not requested and paid within the grace period, then it remains possible to request restoration within six months from the end of the grace period. After this period, renewal is no longer possible for any reason.

Renewal within the grace period is permitted without cause as long as the renewal fee and surcharge are paid. Beyond the grace period, restitution is only granted in certain circumstances and it must be shown that the failure to renew was unintentional. A request for restoration must be accompanied by an explanation of why the renewal did not take place – often in the form of a witness statement – along with a restoration fee.

The UKIPO Restoration Officer will assess the circumstances surrounding the non-renewal to ensure that the non-renewal was unintentional. One of the main reasons why a trademark holder should not be denied restoration is that the non-renewal is due to the fault of the appointed agent. If a restoration is denied, the brand owner must be given written reasons for the denial and a hearing will be allowed. If restoration remains denied after the hearing, the renewal fee will be refunded but not the restoration fee.

Next steps

Although restorations are generally possible, there is a caveat for brand owners and their overseas representatives. A registration is removed from the register at the end of the grace period and is therefore not visible to new applicants performing trademark searches before filing. Therefore, infringements of a subsequently restored mark that occur while a mark is not on the register – after the end of the grace period but before restoration – will not be actionable.

A clear understanding of the rules around renewal of UK trademarks, particularly cloned rights, is essential to avoid an inadvertent loss of rights in the UK. One way to manage this risk and at the same time meet the UK service address requirement is to appoint a UK representative for all UK trademark rights, cloned or not.

A version of this article first appeared in the International Law Office (ILO) Intellectual Property Newsletter.

Share.

Comments are closed.