United Kingdom left European Union on 1st of February 2020. For the moment, is a transition period that will last until 31 December 2020, period within EU law remains applicable to and in the UK.

If the European Union fails to reach an agreement with the United Kingdom or if it fails to sign another agreement extending the deadline, on 31 December 2020, European trade marks should, bearing in mind the EUIPO past communications, cease to have effect on the territory of UK (in this moment, EUIPO says that all past communications is not relevant anymore, as it has become devoid of purpose, but it does not offer a relevant answer regarding the future protection of EU trade marks for the British territory).

Given that the protection of a EU trade mark for British territory depends on an unforeseeable event, trade mark owners should take steps to maintain and strengthen protection.

Accordingly, if EU trade marks will no longer be protected in the United Kingdom, the proprietor of a trade mark shall make use either of registration by national means or of registration through the World Intellectual Property Office (WIPO) designating UK territory.

 

What is WIPO?

The WIPO is an office through which the protection already obtained in a given territory can be extended to another territory.  For example, if we have a trade mark registered with Germany national trade mark office, we can make use of registration via WIPO with UK as designated territory, and the protection already acquired for Germany will be extended to British territory.

 

Can I seek protection for UK on the basis of an EU trade mark?

Yes. Although the EU trade marks are already protected in all Member States of the European Union, the extension may concern in particular any of the EU Member States and not only (in particular, the international registration may also designate countries outside the European Union or the European Economic Area as designated territories).  The difference is that the international trade mark becomes independent of the EU trade mark 5 years after registration – so if the EU trade mark no longer offers protection for UK, the international WIPO trade mark will continue to be protected in the UK, if the UK is one of the designated territories of the WIPO trade mark.

 

How much does it cost?

Fees will be charged for this procedure by three offices: the office where the trade mark is already registered, the international office and the designated office where the protection of the trade mark will be extended.

The fees to the WIPO international office will be paid in the CHF (Swiss franc – the WIPO headquarters being in Geneva).  Fees to the international office and to the office where the trade mark will be extended will be paid directly to the account of the international office only.

Briefly, the official fees differ depending on the type of the trade mark (word mark, black and white or color) and the number of Nice classes of goods and services.  For example, if we extend a European trade mark with a logo in colour containing word elements registered for a single Nice class with United Kingdom as designated territory, the fees will be: EUR 300 the fee charged by the EUIPO, 903 CHF the fee charged by WIPO and 227 CHF the fee charged by the UK office.

 

How long does it take?

Unlike most registrations, the international procedure is likely to be the most time-consuming.  The registration is thus completed within 12 to 16 months because two examinations (one carried out by the international office and one by the office for which the protection is extended) are carried out, adding the opposition period that can be filed by the holders of earlier rights.

Taking into account all the above information, in order to find the best solution to the problem “Brexit”, our recommendation is to get in touch with an IP agency/lawyer.

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