Let us analyse legal framework in the UK that governs trademarks registered with the European Patent Office and see where to apply now to obtain legal protection for a trademark in England.
In June 2016, the UK’s referendum on EU membership resulted in majority of the votes cast being in favor of leaving the EU. In practice, it turned out to be a very complicated and difficult process, as the common space of the union states that existed for a long period of time led to the unification of trade markets, unification of the legal status of citizens of member states, application of generally accepted rules of law and the like.
Common legislative provisions were also generally applied to the objects of intellectual property and visual identity. As a result, the exit of Great Britain from the European Union took more than 4 years and for today there are still issues to be agreed and settled.
In this article, we propose to consider the current state of the trademark industry from a Brexit perspective. The most interesting issues are as follows:
What is the status of trademarks that were previously registered within the European Union?
How will pending EUTM applications be handled in the UK?
How should a Russian organization willing to register a trademark in the UK proceed now?
Are European Union trademarks valid in the UK?
Yes, trademarks that were previously registered with the European Patent Office will retain full protection in the UK. For this purpose, all signs registered by December 31, 2020 will be cloned into the register of trademarks in the UK. Similar action will be taken in respect of trademarks registered in the European Union through the Madrid system for the international registration of trademarks. It is worth noting that this will not entail additional material costs for the right holders and the process will take place automatically and free of charge.
The trademark will retain its original priority date.
After cloning, trademarks become completely independent of the mark registered in the EU.
The legal status of such a mark will be entirely similar to that provided for trademarks registered under the laws of Great Britain.
The right holder will obtain an electronic certificate of trademark.
What happens to pending EUTM applications
Given on January 1, 2021 no decision was made on the EUTM application, the applicant will have to reapply for registration of the trademark in the UK. At the same time, if such application is filed during the transition period which is established till September 30, 2021, then in case of positive decision on registration, the right holder will be able to keep initially established date of priority. The prerequisite for the above is the filing of a trademark application in respect of an identical list of goods and services as previously filed.
How to register a trademark in the UK now?
In order to a Russian or any other company obtain legal protection for a trademark in the territory of the UK now, it should choose one of the following options: to apply directly to the patent office of the country or use the Madrid system for the international registration of trademarks. The first option looks a better choice when registration is planned in one foreign country, in other cases it is better to use the Madrid system, which is designed to enable the right holder to optimize the time and cost of registering a trademark in different countries around the world.
To summarize the above, the following conclusions can be made:
Trademarks registered with the European Office prior to December 31, 2020 will be cloned and entered in the UK Trademark Registry. No action is required of the right holder for this. However, once entered into the register, the trademark becomes completely independent of the European Union trademark. This means that it can be separately challenged by interested parties and a separate payment of State duty will be required to maintain protection.
If by January 1, 2021 a decision on the application for registration of a trademark in the European Patent Office has not been taken and the applicant wishes to have the trademark protected in the UK territory, it should reapply to the UK Patent Office.
If a person or a legal entity want to register a trademark in the UK, it can now be done by contacting the national office directly or by using the Madrid system for the international registration of trademarks.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63