The Impact of Brexit on Trademarks
As of 31 December 2020, the transition period comes to an end and the EU law will not apply anymore to the UK. The consequences of this event will affect many sectors, among which the one of the intellectual property. The following describes which are the effects on the European Union trademarks (EU Trademarks) as well as on the international registrations designating EU, distinguishing those registered from those not protected yet on 31.12.2020.
EU TRADEMARKS ALREADY REGISTERED ON 31.12.2020
The Withdrawal agreement provides that the owner of the EU trademark which have been registered before the end of the transition period shall, without any re-examination, become the owner of a comparable registered and enforceable intellectual property right in the UK under the law of the UK.
As of 1 January 2021, we will witness the creation of comparable UK trademarks for each of the EU trademarks. The creation of the comparable UK trademarks will be automatic, managed directly by UK’s Intellectual Property Office (UKIPO). It will not be necessary to file any application and there are no fees to pay for this.
The comparable UK trademarks will keep the filing date of the EU trademark and priority or seniority dates will automatically be recorded in the Registry if they were claimed. The renewal date of the comparable UK trademark will also be maintained the same of the original EU trademark. It is to be noted that the comparable UK trademark will be created even in the case the EU trademark is expired at the end of the transition period, but still can enjoy the 6 months grace period as of 1 January 2021.
The comparable UK trademarks, identifiable through the registration number prefixed with “UK009”, will be treated as national UK registrations, independent from the original EU trademarks.
In the event that the owner of the comparable UK trademark is not interested to hold such right automatically granted, it may opt out submitting a specific request after 1 January 2020 (not before).
On the contrary, if the owner wishes to hold the comparable UK trademark, a new UK representative should be appointed for managing the registration.
Further, the renewal dates shall be monitored. Where the expiration date falls after 1 January 2020 and the owner wish to renew it, a separate renewal fee for extending the duration of the comparable UK trademark shall be paid directly to the UKIPO. If the comparable UK trademark expires after 6 months from the Brexit, the UKIPO will notify the owner, sending a renewal reminder. Such notice will not be sent if the comparable UK trademark expires within the first 6 months of 2021.
In case the EU trademark has expired before 1 January 2021 and, at this date, it is in its grace period, the renewal shall be made to EUIPO. The UKIPO will automatically renew also the comparable UK trademark already created. If the expired EU trademark will not be renewed in the grace period, the corresponding comparable UK trademark will be removed from the UK Registry.
PENDING EU TRADEMARK APPLICATIONS
The UKIPO will not create a comparable UK trademark as it will happen for the registered EU trademark. There is a 9-month period starting from 1 January 2021 for the owner of the EU trademark application, for filing a new trademark application with the UKIPO. In such way a comparable trademark application will be created. Such application is a national UK application which will keep the filing date (as well as priority or seniority dates) of the EU trademark application. The filing fees shall be paid to the UKIPO and the UKIPO will conduct the examination of the application.
In case the national application in UK is filed after 30.09.2021, the UK trademark application will have its own filing date and the priority or seniority dated of the EU trademark applications will not be inherited by the national UK application.
PROCEEDINGS PENDING BEFORE THE EUIPO ON 31.12.2020
Oppositions only based on UK prior trademarks
With the Brexit, the oppositions based on UK prior mark only will be concluded automatically, since the UK trademarks cannot be anymore a prior right for opposing an EU trademark. As a consequence, the EU application will be granted for registration. If the owner of the EU trademark wishes to obtain the protection in UK, it shall file a new national trademark application with the UKIPO within 30.09.2021. In such case if the application will pass the examination, the original opponent may choose to start a new opposition proceeding before UKIPO according to the UK law.
Oppositions based on UK prior trademarks, EU prior trademarks or other national trademarks
After Brexit, such proceedings will continue. Basically, the UK prior mark will not be considered the base of the opposition which will be grounded only on the other no-UK trademarks. As above, in case the owner of the EU opposed application decides to file a new application in UK such application can be opposed according to the national UK laws.
Oppositions based on EU prior trademarks or other national trademarks
The opposition proceedings based on EU prior trademarks or other national trademarks will continue, without being impacted from the Brexit.
Cancellation proceedings against EU trademark
If on 31.12.2020 the EU trademark is pending in a cancellation proceeding and it will be declared invalid or revoked, the corresponding comparable UK trademark will be invalidated or revoked as well. However, if the grounds of the decision are not recognized in the UK, the UKIPO will not be obliged to apply such decision on the comparable UK trademark.
INTERNATIONAL REGISTRATIONS DESIGNATING EU – DESIGNATION ALREADY REGISTERED ON 31.12.2020
As for the EU trademark, the owner of the international registration designating EU registered before the end of the transition period, will become, without any new examination, the owner of a comparable UK trademark, registered in UK under the national law, which will be recognizable thanks to the registration number with the prefix “UK008”.
The filing and registration dates of the comparable UK trademarks will be the same of the international registrations from which they originate. The same for the renewal dates. However, in case the EU was subsequently designated, the registration dates will correspond to the date in which the subsequent designation is registered in the international Registry. Such date will be adopted also for the future renewals.
In addition to the provisions set out for the EU trademark, the owner of the comparable UK trademark automatically created from the international registration designating EU may choose to subsequently designate the UK, in accordance with the provisions of the Article 4bis of the Protocol. According to this article, the international designation would replace the comparable UK trademark, allowing the owner to regain the advantages of the centralized management. The owner should request to the UKIPO to record such replacement in the UK Registry. However, the owner must note that the subsequent designation of the UK would be examined by the UKIPO and published for opposition, while the comparable UK trademark will be automatically created and recorded in the UK Registry.
INTERNATIONAL REGISTRATIONS DESIGNATING EU – DESIGNATION NOT PROTECTED YET IN EU ON 01.01.2021
The UKIPO will not create a comparable UK trademark but the owner of the international registration designating EU which has not been protected yet, should file a new trademark application with the UKIPO within 9 months starting from 1 January 2021. In this way the new UK application will maintain the initial date of the international registration or subsequent designation and it can record the priority and seniority dates.
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