Although the news is still fresh and we are not yet sure what the alternative set-up and the legal implications of Brexit, the below information will hopefully shed some light on the main issues regarding the validity of EU Trademarks and Industrial Designs in the UK.
The below information is clearly based on our understanding of the situation and is subject to any further decision from the EU Intellectual Property Office and/or any other EU Institution and to any UK law .
1. EU Trademarks and Designs cover the member countries of the EU.
The scopes of the European Union Trade Mark (“EUTM”, formerly Community Trade Mark) and the Registered Community Design (“RCD”) are defined by reference to the Member States of the European Union. This means that after Brexit, the United Kingdom will no longer form part of the EUTM and RCD systems.
As a consequence, it is foreseeable that UK intellectual property attorneys will not be able to represent clients before the EU IPO, as the authorisation to act before the EU authorities is dependent on qualification in a Member State of the European Economic Area.
2. What about existing EU Trademarks and Industrial Designs?
It is also foreseeable that existing EUTMs and RCDs will cease to have effect in the UK. Further owners of national UK trademarks will no longer be able to object to any conflicting EU trademark applications.
The next legal steps and any possible transitional provisions procedures, will be decided by the UK and EU Authorities. It is our understanding, based on media publications and some UK Law Firms announcements, that it is likely that there will be a grace period during which existing EUTMs may be re-registered as national UK trademarks with no loss of priority. This is similar to the solution adopted in other cases where a country has seceded from a multi-jurisdictional trade mark system. The most recent such example was the separation of the Montenegrin trade mark system from the Serbian- Montenegrin trade mark system, which completed in 2011.
3. New EU Trademark and Industrial Designs applications
EUTM and RCD filings made following a Brexit would thus not cover the UK.
Therefore , in case an applicant wishes to enjoy protection in the UK, it is recommended to file a national application. It is also possible to use the Madrid Protocol and therefore the UK national application to be based on existing or new EUTMs.
Our Firm, based in Cyprus, can assist you for any issue in relation to your EU Trademark and Design request. For more info, please send us an email to info@ipcyprus.com
