How will trademarks be protected in the Great Britain after BREXIT?

Triniti

The Withdrawal Agreement was finally concluded between the EU and the UK and the UK will leave the EU as from 1 February 2020.

Every IP rights owner is worried how Brexit will affect the rights: will the earlier EU rights be further protected in the UK and vice versa? Unfortunately, it is still unclear.

Provisions of the Withdrawal agreement annuled the previous guidelines (please see below) and stipulate that during a transition period that will last until 31 December 2020, EU law remains applicable to and in the UK. This means that the effect of the EUTM and RCD Regulations and their implementing instruments are extended at least until 31 December 2020.

This continued application of the EUTM Regulations and the RCD Regulations during the transition period includes, in particular, all substantive and procedural provisions as well as the rules concerning representation before the EUIPO.

Also, all proceedings before the UK Office that involve grounds of refusal applicable to the territory of the UK, earlier rights from the UK, or parties/representatives domiciled in the UK will have effect as they did before at least until 31 December 2020.

It is said that more information on what will happen with the IP rights after 31 December 2020 will be available soon. So, stay tuned!

Please nore that information below is not valid any more.

Trademarks of the European Union (EU), acquired prior to the withdrawal of the United Kingdom (UK) from the EU, should be also protected after the withdrawal in accordance with the EU legislation. New provisions would only apply to newly registered trademarks.

Such a position was formulated in the current version of the draft Brexit agreement. However, this version was not approved by the UK Parliament and it is still very likely that it will not be, resulting in the UK leaving the EU without an agreement.

So what is to happen with the Lithuanian trademarks registered in the EU as a trademark with protection valid in the UK in the event of the UK’s no-deal exit from the EU?

The UK has stated its formal position on the issue (https://www.gov.uk/government/publications/trade-marks-and-designs-if-theres-no-brexit-deal/trade-marks-and-designs-if- theres-no-brexit deal) declaring that:

The Government will ensure that the ownership rights to all the existing registered EU trademarks will continue to be protected and enforced in the United Kingdom by providing an equivalent UK-registered trademark.

Holders of the rights to the existing EU registered trademarks will receive a new equivalent right granted by the UK, that will become enforceable upon the UK’s withdrawal from the EU and it will require minimum administrative efforts and resources of a rightholder (still, it is likely that a fee of some kind will be levied). Then the trademark will be treated as if it has been applied for and registered under the UK law; however, it will have the pre-emptive right of an earlier EU trademark.

A little bit different the situation will be with the EU trademarks already applied for registration and not yet registered – the protection in the UK will not be granted for them and a rightholder will have to submit a separate application in the UK, although it will have the opportunity to make use of the earlier date of application for the EU trademark.

Thus, the aim is to secure protection awarded to the EU trademarks in the UK even after BREXIT, regardless of whether the withdrawal will be with or without an agreement. In any case, all Lithuanian companies must check the trademarks held by them and follow further guidelines of the UK Trademark Office, since if their instructions are overlooked there is a high risk of the loss of protection of one’s trademark in the UK. In exceptional cases, we recommend you to apply for a separate trademark registration in the UK right away.

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