3 August 2020TrademarksMuireann Bolger

Thousands of ‘cloned’ UKIPO trademarks to expire post-Brexit

Nearly 100,000 newly cloned UK trademark registrations will become defunct next year following the  Brexit deadline of December 31, research by IP data provider Clarivate has revealed.

Following Brexit, more than 1.5 million additional UK trademark registrations will be created when registered EU trademarks and EU designations of international registrations are cloned onto the UK Intellectual Property Office’s (IPO) register.

Robert Reading, director, content and government strategy, IP group, Clarivate said: “It will have a big impact on the IPO because at the moment it only has about 750,000 records, and soon it will more than triple in size.”

He added that roughly 10% of the trademarks that will be copied over are due to expire next year because they are coming up to their ten year expiration date, while nearly 60,000 of these cloned trademarks will expire within the first six months.

Previously, rights owners who had to renew trademarks could begin the renewal process six months in advance. However, it will not be possible to renew trademarks that are due to expire before the end-of-year deadline. “It is going to be a bit of a rush,” said Reading. “The cloned UK trademarks will not carry the renewed status, and as a result more than 1,300 new UK records will be expiring in the first week of 2021 alone.”

‘60,000 letters’ to be sent by IPO

Clarivate’s data revealed that 8,256 new trademarks will be expiring in January, with 9,190 and 10,960 marks expiring in February and March, respectively. Reading added that while the IPO will not charge a late renewal fee for the first six months of 2021, there will be a large number of new trademark records that will require urgent attention.

“The IPO is going to have to write to record agents about trademark registrations that are due to expire over the first six months, and send out about 60,000 letters, so that is a lot of work,” he explained.

Germany owns the largest number of affected trademark records, with 10,436 marks, followed by the US with 8,163 marks. According to the IPO, where the renewal date of a trademark falls after the end of the transition period, the UK renewal fee must be paid to continue the protection of the trademark’s right in the UK.

A spokesperson said: “This approach corresponds to the usual situation for trademarks in the UK whereby a renewal provides ten years of trademark protection. It also reduces cluttering of the register with the UK registration being maintained only where there is proprietor interest.”

She added: “We want to reassure our customers that we will be contacting them in advance to make them aware that their right will need to be renewed, allowing them time to plan for the change. We are prepared for an increase in the number of renewal requests following the transition date, and therefore do not anticipate operational delays.”

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk

More on this story

13 August 2020   Alison Simpson of Urquhart-Dykes & Lord outlines IP law in the UK.
28 April 2020   David Potter of HGF explains the headline findings of a survey on brand protection post-Brexit.
23 January 2020   Almost half of UK and European businesses expect to change their brand protection strategies after the UK leaves the EU, although 31% don’t know how they’ll register trademarks, according to a report from IP specialists HGF.