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Trade marks and BREXIT:

Trade marks are signs which are used in connection with a product or services to distinguish it from other similar products or services.
In many countries, registration creates a rebuttable presumption about the proof of ownership of the mark.

In general, registration of a mark has effect in the territory only in which the registration occurs. This means that if a business wants to obtain trade mark protection in more than one country, separate set of applications have to be submitted in accordance with the local laws of the countries in which the protection is sought.

The EU was able to harmonise registration process of trade marks among the union. An applicant can register his trade mark by a single application to the European Trade mark Office (EUTM). Such registration, if successful, becomes effective amongst the EU Members. The application of a trade mark under the EU system is unitary in its character. Therefore, a successful objection of the trade mark application which is raised in any of the members of the EU trumps the whole registration process.

The effect of BREXIT on registered trade marks:

After BREXIT the registered marks via the EUTM application have no effect in UK. However, the UK government has created an automatically parallel register free of charge for every registered mark in the EUTM.

Transitional Arrangements:

a- If at the time of BREXIT, 31 Dec. 2020, if an application was pending at the EUTM, the applicant has the right to claim a priority right before the UK Intellectual Property Office (UKIPO). The effect of such priority claim is that the application date of the trade mark before the UKIPO will be the same date of the application to the EUTM. Such priority is meant to bar third parties from succeeding in registering a trade mark in the UK if a prior application to register the same or a similar one is pending before the EUTM at the time of BREXIT at the objection of the 1st applicant.

b- Art. 139 of the EU Trade Mark Regulation gives the right to an EU trade mark registrant or applicant that his registration or application has ceased to exist, withdrawn or refused within the EU to request for a conversion of his registered mark or application to a national application within a member of the EU subject to a three months limitation period. The transitional arrangements allow a registrant or an applicant whose application ceased to exist, withdrawn or refused in the EU as of 31 Dec. 2020 to claim priority rights before the UKIPO within the 3 months limitation period.

c- If the initial application is made in the international bureau of the WIPO, which is claiming the protection in EU as of 31 Dec. 2020, the pending applicant has a window to apply for the same within the UKIPO and he can claim priority to effectuate his rights from the date of the initial application of WIPO.
Under these arrangements, priority rights are available even if the application before the UKIPO is submitted beyond the regular six months before the lapse of which the applicant must claim priority before the UKIPO. However, such transitional arrangements are limited to 2nd of Oct. 2021, after the lapse of this period, the window to obtain priority rights will be removed.

What can GOOD LAW FIRM help you with?

– Filing a new application to UKIPO and claim your priority rights from a previous application in light of the above rules even if the six months period has lapsed, this arrangement is up to 2nd of Oct. 2021

– If you obtain an injunction boarder measure in EU post 31 Dec. 2020, you will need to apply for a separate injunction proceedings in accordance with the UK Laws to cover all Europe.

– If you have a license agreement, and it had covered a reference to a trade mark which is registered under the EU system, a consideration needs to be thought in light of the above to amend the reference clauses to cover UK marks, reluctance to do so may in some instances be inferred as to a waiver of the licensee’s rights in UK.

Article by Ahmed Elsaghir IP AND TRADE MARK LAWYER  at GOOD LAW FIRM

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