On 29 March 2017, the United Kingdom (UK) announced its intention to leave the European Union (EU). At a special summit on April 10 EU leaders agreed on an extension of Article 50 of the Lisbon Treaty (which gives right to the member states to exit the Union) until the end of October 2019.The UK system for trademarks protection would remain unscathed by the decision of Great Britain to exit EU. Until UK is a full member of the EU, European trademarks would still be valid in Britain. When UK leaves the EU, European trademark would still be valid in the other member states in EU.
Brexit with “No deal”
In the Brexit with “no deal” scenario, the rights over registered trade marks will remain and would come into force in UK, as granted equivalent rights, registered in Great Britain. The Government ensures automatic protection in the UK without re-examination and additional fees. The new right will come into force upon the UK’s exit from the EU. The trade mark will then be treated as if it had been applied for and registered under UK law. This means that these trade marks :
• will be subject to renewal in the UK;
• can form the basis for proceedings;
• can be assigned and licensed independently from the EU right.
Applying for registered trade mark or registered design protection in the UK can be done via post or online. This means that for a period of 9 months from Brexit, the government will recognise filing dates and claims to earlier priority. Right holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure.
Pending EUTM applications
Applications for an EUTM, which are ongoing at the point of the UK’s exit from the EU, will need to be refiled with the UK Intellectual Property Office (UKIPO) within nine months from the date of exit using the normal application process for registered trade marks. The UKIPO will recognize the EUTM application date as the filing date for the UK application. Applicants will need to meet the cost of refiling the application in accordance with the UK application fee structure.
International trade marks
As an alternative to applying for an EUTM, brands owners looking to protect their brand internationally may choose to apply for an international trade mark registration (ITM), under the Madrid Protocol. Brexit is likely to have some impact on:
• ITM rights holders who have designated the EU as the territory where they wish to protect their trade mark, but have not separately designated the UK: Given the UK will no longer be part of the EU following Brexit, if the holder of such an ITM wishes to maintain protection for its ITM in the UK following Brexit, it will need to extend the scope of protection of its ITM to specifically include the UK.
• To be entitled to file an international application based on an EUTM through the EUIPO, an applicant has to either be a national of an EU Member State, or have a domicile or a real and effective industrial or commercial establishment in an EU Member State. Therefore, a UK national who is domiciled in the UK will not be entitled to file an international application through EUIPO as office of origin. However, an UK national domiciled in an EU Member State, or an EU national domiciled in the UK, will be entitled to file an international application with the EUIPO as office of origin.
Greta Stoyanova
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