BREXIT AND THE EU TRADEMARK: How will my registration be affected?

BREXIT AND THE EU TRADEMARK: How will my registration be affected?

By María Luisa Santa María and Magdalena Sáenz Lavalle.

As of January 1, 2021, resulting from the withdrawal of the United Kingdom from the European Union (Brexit), the EU trademarks have lost their validity in the United Kingdom. As a result, the inevitable question arises as to what happens to the trademark registrations which, up until now, also provided protection in the United Kingdom.

Fortunately, the answer is simple: if the European Trademark (“EUTM”) is already registered, it will be “cloned” in the UK; however, if it is still pending, the same trademark has to be filed with the United Kingdom Intellectual Property Office (“UKIPO”).

Registered Trademarks in the European Union

If the registration was granted before December 31, 2020, the UKIPO will automatically create equal rights in the United Kingdom (clone). This trademark will have the same filing, registration, and renewal dates that the registration granted by the European Union Intellectual Property Office (“EUIPO”). The process is automatic, and a local representative should be appointed. No fees shall be paid.

Pending trademarks in the European Union

For EUTMs that were still pending before EUIPO by December 31, 2020, the applicant should file an equivalent application before the UKIPO, should they wish to extend the protection to the United Kingdom. The application should be filed before September 30, 2021 and the equivalent application will maintain the application date of the EUTM. Both applications will continue their prosecution separately, going through their respective examination and opposition stages, and the corresponding fees established by each Trademark Office shall have to be paid.

European Union Trademark Registration that expires as of January 1, 2021

If the owner wishes to maintain protection of their trademark both in the European Union and the United Kingdom, it is necessary to file the renewal in both jurisdictions simultaneously and separately. The renewal fees established by each Trademark Office shall be paid.

To sum it up, the rights granted before December 31, 2020, will remain in force for the duration of the registration, in all 27 Member States of the European Union and in the United Kingdom. And for pending applications before the EUIPO, an equivalent application should be filed before the UKIPO before September 30, 2021, should the British territory be of interest.

Finally, trademark registrations that expire as of January 1, 2021, are processed separately under Brexit.

It is important to take this scenario into account, to prevent future conflicts since, as a result of this important political change, the territorial protection of trademark registrations obtained at the EUIPO has been clearly affected. For this reason, we recommend analyzing the British market in detail, in such a way as to take, in a timely manner, the necessary measures so that the trademarks of interest continue to enjoy protection in said territory.

OJAM BULLRICH FLANZBAUM provides advisory services in filing and obtaining trademarks in Argentina and abroad, so we are available to assist you in these specific procedures.

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