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UK, IRELAND & HONG KONG - MERGING TRADE MARK REGISTRATIONS

UK, IRELAND & HONG KONG - MERGING TRADE MARK REGISTRATIONS

United Kingdom, Irish and Hong Kong trademark laws now allow multiple class registrations. If you have several registrations for exactly the same mark (e.g. each one for a different class of goods/services) in any of these countries, then you can apply to merge them together into one registration. For the UK, the registrations need to have the same filing date.  For Eire the registrations need to have the same date of registration and priority (if any).

We understand that some other EU countries are to follow suit.

What are the benefits?

  • Reduced costs for renewals as compared with renewing each registration separately.
  • Reduced costs for other operations involving the merged registration, e.g. recordal, change of address, as opposed to dealing with separate registrations.

What are the major disadvantages?

  • For Hong Kong, if registrations to be merged have different registration dates, the merged registration will take the later of the dates.
  • If you merge registrations that form the basis for registrations in certain Commonwealth countries, a merged UK registration may give problems.
  • It is not possible to merge a trade mark which is currently subject to revocation or invalidation proceedings.  Nor is it possible to merge a registration which forms the basis of an International registration filed less than 5 years ago.

What are the costs?

  • In the UK there are no official fees. Our charges start from £130 for the first two registrations merged together, and £90 for each additional registration involved. This reflects the additional record keeping involved.
  • At current rates the saving for the merger followed by renewal of two registrations is approximately £125. There will be savings for subsequent renewals and probably if other operations are involved. There will also be larger savings if merger followed by a renewal of more than two registrations is involved.
  • For Eire and Hong Kong, the charges will vary according to circumstances such as the number of registrations to be merged and the amount of work which would need to be done to amend our database. If you will send us details of your requirements, we would be pleased to advise.

This information is simplified and must not be taken as a definitive statement of the law or practice.

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