Enforcement and protection of EUIPO trademarks post-BREXIT

The United Kingdom is in the process of exiting the European Union. This enormous project raises a number of questions about the post-BREXIT system to be applicable to legal issues related to the country’s EU membership.

One such issue is the fate of EUIPO trademarks registered and applications submitted by the end of membership and afterwards. In order to resolve this and many other issues, the parties have prepared a Draft Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (found here: https://ec.europa.eu/commission/sites/beta-political/files/draft_agreement_coloured.pdf). The agreement is not finalized yet, but all provisions related to the issue of EUIPO trademarks are marked with green, which means that the text is agreed at negotiators’ level and will only be subject to technical legal revisions.

Provisions regulating trademarks clearly indicate one cut-off date – the end of the transition period. The transition period will end on 31 December 2020, as determined in Article 121 of the Agreement.

Holders of EUIPO Trade marks registered before the end of the transition period will become holders of trademarks in the UK that cover the same goods or services, indicate the same sign (Article 50 of the Agreement). It is important to note that there shall be no re-examination (Article 50 of the Agreement), registration shall be done independently by the UK authorities, without additional applications, correspondence address in the UK, and free of charge (Article 51 of the Agreement).

In the case an application for an EUIPO Trade mark is submitted before the end of the transition period, but the trade mark is registered after its expiration, the holder will be entitled to submit similar application in the UK within 9 months after the end of the transition period. In that case, such an application will have the same filing date and priority rights as the EUIPO application (Article 55 of the Agreement).

In any case, EUIPO holders and applicants must take BREXIT inte consideration when planning the protection and possible enforcement of trademarks.

MK-Law regularly assists with registration of trademarks and renders a variety of other services related to protection and enforcement of intellectual property rights.

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