BREXIT has left the world and especially Europe in an uncomfortable stand-by. While the months pass, the number of questions and theories of how, what, and when only increase. Deal, no deal, hard BREXIT or soft BREXIT, even the possibility of a second referendum now seems to be an option, although remote. However, when it comes to trademarks and industrial designs in a post BREXIT era, how they would be handled in the worst-case scenario of a no deal hard BREXIT now seems to be clear.
Presently UK is a member of the European Union. As such, trademarks and designs registered directly through the European Union Intellectual Property Office are enforceable in the United Kingdom as they would be in any other member state. Once the United Kingdom finally abandons the EU, trademark owners will need to register their trademark in the UK if they wish to protect their rights in this jurisdiction.
What happens after BREXIT in the case of trademarks that are already REGISTERED through the EU trademark office?
The UK authority will ensure that all trademarks registered prior to BREXIT continue to have protection within the UK.
How is it that an EU trademark would continue to have protection in a non-EU member country?
The EU trademark will NOT be valid in the UK. However, the UK authority will automatically provide a local trademark registration that mirrors the owner´s EU trademark. The new equivalent trademark will be independent to the EU trademark and will be as if it was registered as a local UK trademark from the start. Therefore, it will need to be renewed directly in the UK in order to maintain validity in the future. In the case of license agreements for EU trademarks, these will not transfer over with validity in the UK, but instead, these license agreements will need to be ratified in the UK or new license agreements will need to be registered.
International trademarks that have designated in the EU and are already registered will also automatically be granted this solution.
What happens after BREXIT in the case of trademarks that have been FILED in the EU but are NOT yet declared REGISTERED through the EU trademarks office?
Trademarks that have been filed (in process) but are not registered when BREXIT is implemented will NOT have validity in the UK. The UK authority will NOT provide the owners with an equivalent UK trademark.
However, the UK trademark authority will grant a 9-month period for owners of trademarks presently in process in the EU to file directly in the UK, recognizing the date of filing through the EU as a priority claim.
International trademarks (trademark registered via the “Madrid System”) that have designated in the EU and are already registered will also automatically be granted this benefit.
If a trademark is not filed within the 9-month allowed period or the special priority date is not claimed, any future filing will have no priority whatsoever and will be treated as any other trademark application filed directly through the UK.
What happens after BREXIT if I want to protect my trademark in both the UK and the EU?
Trademarks have territorial validity. Therefore, if you want to protect your trademark in both the UK and the EU, two separate trademarks will need to be filed directly in those jurisdictions. No single trademark will be able to cover both territories.
It is safe to say that BREXIT is coming, and while it will surely cause some unsolicited inconveniences around the globe, we here at iGERENT are ready. Your questions and comments are always welcomed, and if you require trademark protection in either the UK or the EU we have a group of experienced trademark consultants that can walk you through every step of the process.