Introduction
Risk of loss of rights
UK restoration process
Next steps
Following Brexit, "clone" UK trademark registrations were created that mirrored all European Union trademark (EUTM) registrations registered as at 1 January 2021. These UK clones were identical in all respects to the parent EUTM, from the mark itself to the classes of goods and services covered by the mark and specification. This identity included recording the existing EUTM trademark attorney or other representative as an address for service for the UK clone on the UK Intellectual Property Office (UKIPO) register.
Since 1 January 2021, it has been a requirement that an address for service in the United Kingdom, the Channel Islands or Gibraltar is needed for all new UK trademark applications or to engage in new opposition, revocation or invalidity proceedings before the UKIPO. Brexit has not affected the ability of non-UK representatives to act before the UKIPO. However, an increasing number of trademark owners with UK rights are recognising the value of engaging UK-based representatives, because of the particular expertise they have in dealing with the procedural peculiarities of their local trademark office, potentially reducing the amount of engagement required with the UKIPO and so minimising portfolio management costs overall. This also brings with it the added convenience of being able to use the UK representative's UK-based address for service.
The requirement of a UK address for service does not apply to clone registrations until January 2024. However, trademark owners may want to consider engaging a UK representative for those marks now. The benefits of doing so include bringing all of their UK trademark rights under the umbrella of one UK representative who can manage their portfolio holistically, and (crucially) avoiding the risk of loss of rights that post-Brexit specific rules around renewal of UK trademark rights create, rules with which their non-UK representatives may be (understandably) less familiar.
It is likely that a proportion of owners of UK clone registrations may knowingly choose to allow their UK registrations to lapse on the basis that, while they had filed for EU protection, the United Kingdom was not a key focus market and they have no ongoing interest in the UK market, nor do they wish to pay to renew the UK clone in addition to their original EUTM registration.
What is also transpiring is that some overseas representatives may not have recognised or alerted trademark owners to the split nature of the UK clone right from the EUTM. The parent EUTM and the cloned UK trademark are separate and independent rights, the result being that they must be managed separately, including in relation to renewal. Seemingly unaware of this, some trademark owners have inadvertently only renewed the original EUTM registration, unknowingly allowing the UK clone registration to lapse.
Accordingly, there has been an increase in requests for information relating to grace period renewals and restorations of registrations both from owners of newly created UK clone registrations and from overseas representatives.
Data from the UKIPO is further evidence that missed renewals is a significant issue post-Brexit. It shows that the registry has experienced an increase in formal requests for restoration of registrations.
The following table contains data reflecting actioned (ie, successful) restoration requests to the UKIPO over the past five years.
Year | Total actioned restorations | Total actioned restorations of UK registrations (non-EU clone) | Total actioned restorations of UK clone registrations (EU) |
2018 | 140 | 140 | 0 |
2019 | 92 | 92 | 0 |
2020 | 114 | 114 | 0 |
2021 | 255 | 182 | 73 |
2022 (January to June) | 148 | 77 | 71 |
No restorations were related to EU marks between 2018 and 2020 as no clones had been created at this date. Restorations of clone registrations made up just under 29% of all restoration requests in 2021 – perhaps unsurprisingly, as very few newly created clones would already be due for renewal in order for lapse (intentional or otherwise) to occur. Further, a greater than usual quantity of UK national registrations may have inadvertently lapsed due to reasons relating to the covid-19 pandemic.
In the first half of 2022, some 48% of actioned restorations related to post-Brexit clone registrations. Considering clones make up less than 50% of the UK register of trademark rights, this suggests that a higher overall proportion of clone renewals are requiring restoration based on an inadvertent lapse on the part of trademark owners or representatives, most likely due to being unaware of post-Brexit renewal rules.
Under section 43(5) and (6) of the Trade Marks Act 1994, a registration will be renewed if a request for renewal is filed (accompanied by the renewal fee) prior to the expiration date of the registration. In the event that the registration lapses, renewal remains permissible within six months of the expiry date (known as the "grace period").
If renewal is not requested and paid for within the grace period, it remains possible to apply for restoration within six months from the end of the grace period – that is, within 12 months of the original expiry date. After this time, renewal is not possible for any reason.
Renewal within the grace period is permitted without reason provided that both the renewal fee and the additional fee are paid. Beyond the grace period, restoration is only granted in certain circumstances and it must be demonstrated that the failure to renew was unintentional. A restoration request must be accompanied by an explanation as to why the renewal did not occur (often in the form of a witness statement) accompanied by a restoration fee (Rule 37(1)(b) of the Trade Mark Rules 2008).
The UKIPO restorations manager will assess the circumstances surrounding the failure to renew to satisfy themselves that failure to renew was unintentional. One of the main reasons that a trademark owner should not be refused restoration is if failure to renew was due to the fault of the appointed agent.
If a restoration is declined by the restoration manager, the trademark owner must be given written reasons for the refusal and a hearing will be permitted. If restoration remains declined following the hearing, the renewal fee will be refunded but not the restoration fee.
What should trademark owners and overseas representatives take away from this? First, although restorations are possible, there is a note of caution. A registration is struck from the register at the end of the grace period and is therefore not visible to new applicants carrying out trademark searches prior to filing. Therefore, any infringements of a subsequently restored mark occurring during the time that a mark is not on the register (ie, after the end of the grace period but prior to restoration) will not be actionable.
Second, a clear understanding of the rules around UK trademark renewals, particularly of cloned rights, is essential in order to avoid inadvertent loss of rights in the United Kingdom. One of the ways in which this risk can be managed, and the requirement for a UK address for service complied with at the same time, is to appoint a UK representative (or at least to seek the advice of and work closely with such a representative) in relation to all UK trademark rights, cloned or otherwise.
For further information on this topic please contact Sarah Jeffery at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.
Concetta Scrimshaw, trainee solicitor at Pinsent Masons, assisted with the preparation of this article.