“A trap is only a trap if you don't know about it. If you know about it, it's a challenge.”

We know that registered EU trade marks and designs will be cloned automatically into EU and UK ones after Brexit, and we know also that this will happen for International trade marks that designate the EU.  However, there is a trap here for the unwary.

International trade mark and design registrations protected in the EU will clone into standalone national UK rights, not into IRs that designate both the EU and the UK.  This means that the new cloned UK trade mark and design registrations will need an EEA address for service.  The rules are that, if the owner of a registered trade mark or design is not based in the UK, and is not represented by someone based in the UK, they must provide an address in the EEA with which the UK IPO can correspond.

The question is “when?”

As the purpose of having an EEA address for service is to provide the UK IPO with an address with which it can correspond, it logically follows that a non-UK owner of an IR that currently designates the EU and does not appoint an address for service in the EEA before Brexit may never be told they need one……..  Hence the trap.

The UKIPO announced recently that UK clones will simply have the same numbers as the parent registrations but with the prefix 009 (in the spirit of Brexit, we would have preferred 007….…).  This suggests to us that the process of cloning will be as automated as possible. 

Therefore, the onus is on the owners of International trade marks and designs that designate the EU to take action before Brexit.

We urge our corporate clients around the world to check their records, and our professional associates to check their client’s records.  This is something that can, and should, be done now.

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