The UK Intellectual Property Office (IPO) has recently updated its trade mark rules with respect to replacement of domestic trade marks with International Registrations, providing greater flexibility for businesses managing their trade mark portfolios.
Procedure:
Essentially, replacement allows a designation under an International Registration to replace an existing national or regional registration in any designated territory (subject to certain conditions), thereby enabling the national or regional registration to be allowed to lapse. In the process, the earlier priority and/or filing dates of the national right that is being replaced will be preserved.
Replacement takes effect when the International Designation:
• Is for the same trademark;
• Is held by the same holder;
• contains the same goods and services; and
• takes effect after the date of the national/regional registration.
Whilst replacement takes effect automatically (subject to the conditions being satisfied), there is an advantage in requesting the recordal of the replacement, so as to notify third parties of the replacement. The process to request replacement at the UKIPO is straightforward.
Replacements are likely to become increasingly relevant in the post-Brexit landscape. For example, as a consequence of Brexit, existing EU designations of International Registrations were granted a ‘Comparable Registration’ in order to ensure continued protection post-Brexit.
In theory, replacement provides a mechanism by which to consolidate these comparable marks back into the original International Registration, by filing a UK Subsequent Designation to ‘replace’ the Comparable Registration.
Whilst replacements have not historically been requested very often, the UKIPO expects to see an increase in uptake post-Brexit.
Possible advantages for businesses:
A. Potential long term cost savings
Replacement allows the owner to allow the national filing to lapse, saving on renewal fees going forward.
B. More efficient portfolio management
Replacement allows the owner to manage the mark centrally at WIPO (the Office that handles International Registrations). As such, should there been any recordals that need to be actioned in the future (be it to update owner details and/or record an assignment), these can be dealt with directly through WIPO, without the need to file any paperwork at the UKIPO.
Possible disadvantages for businesses:
A. Short term cost outlay
The owner would of course incur the cost of filing a new UK Subsequent Designation. This cost may be recovered by the owner if they are to maintain/use the particular trade mark over a long period of time, but are less likely to recover these costs if the trade mark does not form part of their long term strategy.
B. Examination pitfalls
For replacement to take effect, the new UK Subsequent Designation would need to be protected, and would need to negotiate the UKIPO Examination and Opposition phases.
Should objections be raised, they would need to be overcome in order for the subsequent designation to achieve protection, potentially altering the cost-benefit analysis of the replacement strategy.
Replacement could be very risky for a brand that is vulnerable to objections (such as on the grounds of descriptiveness and/or non-distinctiveness).
Key Change: Partial Replacement
A change to the practice regarding replacement was announced by the UKIPO on 16 December 2024, implemented through amendments to the Trade Marks (International Registration) Order 2008 and Rule 21 of the Madrid Protocol Regulations, allows for the partial replacement of domestic trade marks with International Registrations under the Madrid System.
The amendment came into force on 21 November 2024, and ensures UK compliance with Madrid Protocol obligations ahead of the 1 February 2025 deadline.
As a consequence, trade mark holders can now:
• replace their UK trade mark registration with an international registration that covers fewer goods and services; and
• maintain protection for goods and services not covered by the international registration through their existing UK registration
What does this change mean for Businesses:
The change to the UKIPO rules allows greater flexibility and choice with respect to replacements going forward.
Notwithstanding the changes, businesses and brand owners should be conscious of the respective benefits and risks associated with replacement. Caution is required before proceeding with a replacement strategy, and advice should be sought from a Trade Mark Attorney.
For more information, please visit:
Trade Marks (International Registration) (Amendment) Order 2024
Manual of trade marks practice - International examination guide
For more information concerning any of your trade mark matters, contact us today.