IMPACT OF BREXIT ON THE TRADEMARKS APPLIED/REGISTERED IN THE EUROPEAN UNION – Eshwars
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IMPACT OF BREXIT ON THE TRADEMARKS APPLIED/REGISTERED IN THE EUROPEAN UNION

Authored by Padma Akila

Britain’s exit from the European Union (EU) on 31st January 2020, is one of the biggest changes in modern commercial relations. It did not only result in a political challenge for diplomats but also a legislative one, giving rise to uncertainty and ambiguity regarding the effects of the post-transition period in the legal domain.

The United Kingdom (UK) and EU had entered into a Withdrawal Agreement which led the UK to depart the EU on 31st January 2020 followed by a transition period (1st February 2020 to 31st December 2020) to begin.

This exit as is commonly and popularly referred to as “Brexit” from the EU community has also had important spillover effects and ramifications for IP owners and more so specifically for trademark and design registration holders in the EU community. Under the Withdrawal Agreement between the UK and the EU, Trademark holders in the EU (which erstwhile included UK as well) can apply to register the same right as a stand-alone right in the UK right within nine months after the end of the transition period, this being up to and including 30 September 2021.

In this write-up, we briefly analyse the important steps that brand owners may need to pro-actively undertake to ensure continued protection of their trademarks in the UK on a stand-alone basis irrespective of their impending trademark applications filed before the EU Intellectual Property Office (EUIPO) of which office the UK was earlier part of. The following table provides the insights regarding the Brexit’s impact on existing trademark applications/registrations in EU from a trademark holder’s perspective:

 

Trademarks registered in the EU on or before 31st December 2020 (national or international application) Automatic extension of statutory protection in UK on a stand-alone basis for a trademark registered on or before 31st December 2020 in EU without any need for filing any form or application with the UK IP Office. Statutory protection will continue in the UK.
Trademark applications in the EU (which erstwhile included UK as well) which are pending registration or have been registered after the 31st December 2020 Automatic creation of UK comparable marks will not apply to those trademarks pending or registered after 1st January 2021 in EU and No statutory protection will be granted in UK for the trademarks pending or registered after 1st January 2021 unless an application along with the payment requisite fees[1] is filed before 30th September 2021 (nine months) before UK IP Office. The application will be allowed subject to UK examination and publication requirements. Statutory protection may be extended to applications filed within nine months after the end of the transition period viz., on or before 30th September 2021.

 

As far as Industrial Design rights are concerned, the Registered Community Designs (RCDs), unregistered Community designs (UCDs) and International (EU) designs will no longer cover the UK. From 1st January 2021, anyone wanting to protect their designs through registration in both the EU and the UK will need to file separate RCD and UK registered design applications.

As regards the status of patents, the European Patent Office (EPO) is not an EU agency and thus the UK leaving the EU would not affect the European patent system. Existing European patents covering the UK also remain unaffected and the protection is granted by the EPO, is valid in the UK even after Brexit.

Accordingly, brand owners in India who have filed trademark applications in the EU community may be required to take pro-active measures on or before the 30th September 2021 to ensure that their trademarks continue to be protected in the UK on a stand-alone basis apart from in the EU.

[1] A Statutory fee of £170 for the first class of goods or services will apply, with an extra £50 payable per additional class.

 

 

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