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Trademarks and Copyrights —

Ensure Your Trademarks and Brands are Adequately Protected in the UK

by Lisel M. Ferguson

Ensure Your Trademarks and Brands are Adequately Protected in the UK

Ensure Your Trademarks and Brands are Adequately Protected in the UK

By Procopio Partner Lisel Ferguson

As we all know, on January 1, 2020, the United Kingdom (UK) left the European Union (EU) under Brexit. There hasn’t been an immediate impact on trademark protection as a result of this change. However, if you have a EU trademark and you fail to “clone” your EU mark in the UK, you will eventually lose that trademark’s UK protection.

To preserve UK protection, you must file a comparable UK trade mark application by September, 30 2021, based on your existing or pending EU trademark.

We are currently actively doing that for our clients, working with foreign associates providing a 50% discount for such filings between now and the deadline.

Assuming the application doesn’t encounter significant objections nor any third-party oppositions, the prosecution costs will also be done at a 50% discount.

The application will be examined by the U.K. Intellectual Property Office (UKIPO) as per a normal national filing.  If you take advantage of cloning into the UK during the nine-month period, you retain the filing date of the original EU trademark. This is the great benefit of cloning.

If you have questions or are interested in cloning of any of your EU marks, please do not hesitate to contact me at (619) 515-3207 or lisel.ferguson@procopio.com. For other questions or inquiries, please contact us by clicking here.

About the Authors

Lisel M. Ferguson

Lisel M. Ferguson

Partner
Lisel M. Ferguson counsels clients on patent, trademark and copyright prosecution worldwide, and intellectual property litigation throughout the United States. She is the leader of Procopio's Intellectual Property Litigation team and co-leader of Procopio's Sports and Active Lifestyle practice group. Lisel’s practice focuses on computer hardware and software, sporting goods, apparel, Internet, entertainment, medical devices, agricultural products and services, and consumer goods. She has experience working with Federal Litigation, Trademark Trial and Appeal Board (TTAB) actions, Uniform Domain-Name Dispute Resolution Policy (UDRP) actions, domain name disputes and Internet law. She is experienced in handling all aspects of intellectual property; in addition to protection and enforcement she has experience with customs, negotiating and drafting licenses and royalty agreements worldwide, with clients from Asia, Mexico, Chile, Australia, Canada, the Netherlands and the United Kingdom.
Lisel M. Ferguson counsels clients on patent, trademark and copyright prosecution worldwide, and intellectual property litigation throughout the United States. She is the leader of Procopio's Intellectual Property Litigation team and co-leader of Procopio's Sports and Active Lifestyle practice group. Lisel’s practice focuses on computer hardware and software, sporting goods, apparel, Internet, entertainment, medical devices, agricultural products and services, and consumer goods. She has experience working with Federal Litigation, Trademark Trial and Appeal Board (TTAB) actions, Uniform Domain-Name Dispute Resolution Policy (UDRP) actions, domain name disputes and Internet law. She is experienced in handling all aspects of intellectual property; in addition to protection and enforcement she has experience with customs, negotiating and drafting licenses and royalty agreements worldwide, with clients from Asia, Mexico, Chile, Australia, Canada, the Netherlands and the United Kingdom.

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