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Forthcoming deadline of 31 December 2021 to record licences and security interests against comparable UK applications and registrations

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United Kingdom

It has been well documented that, following the end of the Brexit transition period on 31 December 2020, the UKIPO automatically created comparable UK trade marks and designs for all EU registered trade marks and registered designs that were registered before 1 January 2021.

Additionally, owners of EU trade marks and designs which were filed prior to the end of the Brexit transition period and were pending on 1 January 2021 were provided the opportunity to file comparable UK trade marks and registered design applications up to 30 September 2021.

What may be less well known is that any licences and/or security interests that were registered against EU trade marks and registered designs were not automatically recorded on the UK Register in respect of the comparable rights that were created post-Brexit. The UKIPO has issued guidance on this here and has provided until 31 December 2021 for parties to record an existing licence and/or security interest against comparable UK registrations or comparable trade mark applications filed.

Although it is not mandatory for such transactions to be recorded, there are benefits in recording licences and security interests, particularly as against potential infringers or third parties acquiring competing rights in a mark. To take advantage of these benefits, the transaction usually must be recorded at the IPO within 6 months of the transaction date but the UKIPO has recognised that the comparable UK application or registration may not have existed at the time of the original transaction, or within a six month window thereafter, so has provided this additional time to take action. If the UKIPO had not allowed the possibility of recording the interest in this way, it could have given rise to an inequitable situation where parties benefiting from a licence or security interest in the UK by virtue of an EUTM, prior to Brexit, would not have been able to rely on the right in the UK post-Brexit.
 
This is likely to be relevant if:

  • you are subject to a security interest, where you may have a contractual obligation to notify the owner of the right over your newly created UK registered designs and/or trade marks;
  • You have security interests over other parties' registered EU trade marks and/or designs, which were in effect prior to the end of the Brexit transition period; or
  • you are a party to a licence agreement, which it would be advisable to record at the UKIPO.  
Please get in touch with your usual contact at Fieldfisher if you would like further information or advice about this.
 

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