Intellectual Property Law Knowledge Center

Notice Regarding Brexit’s Impact on Your Trademark in the European Union

February 28th, 2019

By Bridget H. Labutta

Notice Regarding Brexit’s Impact on Your Trademark in the European UnionOn March 29, 2017, the United Kingdom (UK) submitted its intention to withdraw from the European Union (EU). The British exit from the EU – i.e., Brexit – is scheduled to take effect as of March 29, 2019.

Once the UK exits the EU, all laws of the EU will cease to apply to the UK. In particular, the EU regulations that allow you to secure a single registration to protect your trademark in all 28 Member Countries of the EU will no longer include the UK.

It is still uncertain whether the UK will exit the EU under an official withdrawal agreement (so-called deal) or without any written agreement (so-called no deal). Under a no deal, the exit date is March 29, 2019; under a deal, the exit date is January 1, 2021, allowing for a short transition period.

For Existing EU Trademark Registrations or International Registrations Designating the EU

Under both a deal or no deal, the UK Government has confirmed that it will automatically grant a new equivalent UK trademark right that will be protectable and enforceable within the UK, which will come into force at the time of the UK’s exit from the EU.

Owners will be notified when the new UK right has been automatically granted. There are no official fees and you do not have to take any action to receive your new UK right.

If you do not want to receive a new UK right, please let us know so that we can opt out or renounce your trademark rights in the UK at the appropriate time.

For Pending EU Trademark Applications

Under both a deal or no deal, applications that are still pending as of the exit date will not be protected in the UK. If a UK trademark right is desired, it will be necessary to re-file a new application directly with the UK Intellectual Property Office (UK IPO).

If a new application is filed with the UK IPO within nine (9) months of the exit date, then the UK IPO will recognize the original filing dates and priority claims recorded on the corresponding EU application. Standard attorney’s fees and government filing fees are expected to apply.

Please let us know if you want to consider filing a new application directly with the UK IPO at the appropriate time.

Contact us at trademark@panitchlaw.com if you have any questions.

More information on Brexit can be found here:

https://www.gov.uk/government/publications/ip-and-brexit-the-facts/ip-and-brexit

https://euipo.europa.eu/ohimportal/en/Brexit-q-and-a

https://www.inta.org/Advocacy/Pages/Brexit.aspx

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