After covering the topic "Brexit and GDPR" in the previous installment of this special, today we will analyze the possible consequences of Brexit on intellectual property issues, focusing in particular on EU trade marks (EUTMs).
But let's take it step by step.
Since the various proposed Brexit agreements have been rejected by the British parliament, let's try to understand what would happen to EU-registered trademarks in the event of a no-deal exit on 31 January 2020.
Before you start reading, for an introduction to the EU trade mark, click here.
- European entity holding a EU trade mark
In the absence of an agreement, on 31 January 2020 EU trade marks will continue to be protected in the territory of the European Union but no longer in the United Kingdom, which would be considered a "third country" (as provided by Art. 1(2) of the European Union Trade Mark Regulation (EU) 2017/1001).
However, the guidelines published by the British government and updated to 17 October 2019 state that the United Kingdom will provide EU trade mark holders with a comparable trade mark, valid from the date of exit from the EU. The filing date of the trademark application will remain that of the EU trade mark, and the new UK trademark will have the legal status of any other trademark registered with the UK Intellectual Property Office (UKIPO). It is also specified that no fee will be payable to obtain the UK trademark certificate equivalent to one's EU trade mark. Furthermore, no copy of the registration certificate will be provided, but the relevant details will be available on the gov.uk portal.
Ultimately, these trademarks will be subject to UK law and will have to be renewed in the United Kingdom. Likewise, the same intellectual property titles may be licensed under the rules of British law, regardless of the provisions of EU law.
- European entity with a EU trade mark in the registration phase
A European entity that has filed an application for a EU trade mark that has not yet been registered by 31 January 2020 will have to file a further application in the United Kingdom in order to protect its trademark in that country as well. In this regard, for a period of 9 months from Brexit the United Kingdom will guarantee the right to file an application for an equivalent trademark, retaining the same filing date as the EU trade mark (and therefore earlier than the date of filing of the application for registration in the United Kingdom).
In this case, however, the costs of registering the trademark in the United Kingdom will have to be paid.
- UK-based company holding a EU trade mark
Ownership of the EU trade mark will continue to be governed by the law of the European country in which the trademark holder has a seat. In cases not covered by Art. 19 of the EU Trade Mark Regulation (EUTMR), Spanish law will apply (the country where the European Union Intellectual Property Office – EUIPO – is located).
Other changes will concern the ability of British parties to act directly before the EUIPO in the event of disputes. Indeed, while a person residing in a third country can independently file a trademark registration application, for representation before the Office they must be assisted by "professional representatives entered in the list maintained by the Office or by legal practitioners qualified to practice in a Member State of the European Economic Area and having their place of business within the European Economic Area, to the extent that they are entitled, within that Member State, to act as professional representatives in trademark matters;" (Art. 120(1)(a) of the EU trade mark Regulation).
Below are some useful links:
Changes to trade mark law after Brexit
EUIPO - Impact of the United Kingdom's withdrawal from the European Union on the European Union
trade mark and the Community design
Do you have any questions, doubts or concerns? Write to info@argobs.com.