18 Feb EUTM applications pending at 1 January 2021 and subsequent changes
Brand owners of EUTM applications that were refused by the EUIPO but were appealed before 1 January 2021 should note that these applications will still be classed as “pending” for the purposes of filing a UK comparable application within the 9 months from this date (i.e. before 30 September 2021), as no final decision was issued before the end of the Transition Period.
However, if the EUIPO has subsequently issued a decision refusing the application in its entirety or the application has since been withdrawn then the you can no longer file a UK comparable application before 30 September 2021 claiming priority and seniority (if applicable) from the EU application. This is because, as part of this filing procedure, the UKIPO will check the status of the EUTM application via the EUIPO register when the UK comparable application is examined and will refuse the EU priority for the UK comparable application where the EUTM has since been refused or withdrawn. The UK application will therefore maintain the date on which it was filed. If the EUTM is only partially refused or limited then the client can file a UK comparable application that corresponds to the restricted EUTM application.
We therefore advise brand owners wishing to protect their trade mark in the UK territory and have an EUTM application that was pending at 1 January 2021 but is the subject ongoing proceedings (e.g. opposition, provisional refusal, appeals etc), to consider filing the UK comparable application based on their EUTM application as soon as possible before the EUIPO issues its final decision, in order to benefit from the EU priority/seniority date(s). The UKIPO has an unprecedented level of applications to examine and there is currently backlog, so better to file sooner rather than later. However, brand owners should keep in mind that where the EUTM application was provisionally refused on absolute grounds, it is possible (but not certain) that the UKIPO may also refuse the UK comparable application on a similar basis.
For further information and advice on trade mark rights and protection, please get in touch with Elys IP
