Following the end of the Brexit Transition Period, the UK became a third country under EU Law on 1 January 2021. This third country status has implications for trade mark law.

For Irish holders of a European Union Trade Mark (EUTM) that came into existence before 31 December 2020, they can avail of the “comparable” (yet legally distinct) UK trade mark, offering trade mark protection within the UK.

For Irish applicants for an EUTM, where the application was filed at the EU Intellectual Property Office (EUIPO) prior to 31 December 2020, they can avail of “the right of priority”. This right of priority enables these Irish applicants to file an application at the UK Intellectual Property Office (UKIPO) in respect of goods or services which are identical to or contained within the application previously filed at the EUIPO.

Applications must be submitted to the UKIPO by 30 September 2021 and they shall be deemed to have the same filing date and date of priority as the corresponding application filed at the EUIPO. Applicants will be subject to the usual UKIPO application fees. Both the comparable UK trade mark and the right of priority are set out in the Withdrawal Agreement between the UK and the EU.

For Irish individuals or companies currently contemplating an EUTM, they must bear in mind that this particular trade mark no longer offers protection within the UK due to its third country status. Instead, the Irish applicant will need to register the trade mark separately and independently in the UKIPO if he or she wishes to obtain protection within the UK. However, this type of local filing can be effected in parallel with a distinct filing for an EUTM at the EUIPO.

Online Gazette

This is an abbreviated version of the article ‘Strange Brew’ by Dr Mark Hyland, IMRO Adjunct Professor of Intellectual Property, which will appear in the August/September issue of the Gazette. For more information about the magazine and daily news service, visit the Gazette.