BREXIT WHAT ABOUT TRADEMARK REGISTRATIONS?
The Agreement on the withdrawal of the United Kingdom from the European Union provides for a transition period ending on December 31, 2020. The UK Government has indicated the steps it will take to continue to provide protection in the UK for trademarks on international registrations with effect in the European Union before the end of the transition period.
International registrations under the Madrid System that have not been refused or protected by the European Union Intellectual Property Office (EUIPO) as of January 1, 2021.
Holders of an international registration designating the European Union that has not been refused or protected by the EUIPO as of January 1, 2021, may apply for registration in the national trademark register with the United Kingdom Office (UKIPO) during the nine months after January 1, 2021. The initial date of the EU designation will be maintained.
The same applies to holders whose international registration or subsequent EU designation, as the case may be, is recorded in the International Register after the end of the transition period, but with a date prior to January 1, 2021. In that case, the period of nine months will be counted from the date of recording of the international registration or subsequent designation of the European Union in the International Register.
International registrations under the Madrid System protected in the EU before January 1, 2021.
After the end of the transitional period, a comparable national mark will be created and recorded in the UK Register for each international registration that has obtained protection in the European Union before the end of the transitional period.
Where protection is the result of several designations of the European Union in an international registration (e.g., a designation made in the international application and a subsequent designation), a comparable national mark will be created for each designation.
Such new comparable marks created in the United Kingdom will be independent of the international registration and will be governed by the law of the United Kingdom. They will have to be administered directly with the UKIPO by the holders.
Rights of holders of existing international registrations
The end of the transitional period will not adversely affect the rights of holders of existing international registrations, in respect of which the European Union is the Contracting Party, who are citizens of the United Kingdom or have their domicile or a real and effective industrial or commercial establishment in the United Kingdom. The same shall apply to international applications filed with the EUIPO by citizens or entities of the United Kingdom before the end of the transitional period.
Centralized management under the Madrid system for UK comparable marks
After the end of the transitional period, the holder may subsequently designate the United Kingdom in the international registration that led to the creation of a comparable United Kingdom mark. Under Article 4bis of the Protocol, such an international registration would replace the comparable UK mark, allowing the holder to regain the benefits of centralized management. The holder may request the UKIPO to record such a replacement in the UK Register.
The same will apply to UK registrations in respect of which the holder has claimed the earlier date of designation of the European Union. The holder may subsequently designate the United Kingdom in the international registration concerned once the mark has been registered in the United Kingdom, so that Article 4bis of the Protocol would apply.
However, owners should be aware that, while a comparable right will automatically be created in the UK, the subsequent designation of the UK will be subject to examination by the UKIPO and published for opposition purposes.
For more information, please refer to UKIPO Form TM28 (Application for Registration of a Concurrent Registration) to record that an internationally protected (UK) mark replaces a mark registered in the UK.
Continued use of the Madrid System as a United Kingdom citizen or legal entity after the transition period
The United Kingdom is a Contracting Party to the Madrid Protocol, so interested persons are and will continue to be entitled to file an application through the UKIPO as Office of origin and, as a new owner, to claim their entitlement through the United Kingdom in a request for recordal of a change of ownership.
Please note, however, that after the end of the transitional period, you will no longer be entitled to file an application through the EUIPO as Office of origin and to claim a right through the European Union as a new holder in a request for recordal of a change of ownership.
Source: WIPO
