The recent agreement on the withdrawal between the EU and the UK, ratified in January 2020, leaves a number of outstanding issues open to negotiations.
Among the many questions, we should ask ourselves what will happen to the trade mark.
The trademark is protected by both national and supranational laws, including European legislation.
A primary aspect of Brexit effects on the protection of the trademark, may concerns the European trademark (the so-called EUTM).
Many European legal entities have registered the trade mark in application of EU rules.
What happens to the Community trademarks already registered and what happens to the Community trademarks in the process of being registered?
Under the agreement already ratified by the EU and UK in January 2020, EU law will also apply in the UK until 31 December 2020.
Thus, the Community trade mark (EUTM), already registered before 31 December 2020, is converted (without any review), under Article 54 of the Agreement, in an English trade mark and will also be registered as a national trade mark in the Register of the United Kingdom for the same goods and services.
The right conferred by a trade mark registered in the United Kingdom by virtue of that conversion is renewed for the first time on the date of renewal of the corresponding intellectual property right previously registered under EU law, maintaining the same priority date as the Community trademark.
If, by the end of the transitional period, the procedure for obtaining the EU trade mark is not completed yet, Article 59 of the EU/UK Withdrawal Agreement provides for the possibility of lodging an application for a national trade mark in the United Kingdom within 9 months of the end of that period (31 December 2020) so that the UK national trade mark can be recognised, with effect from the date of the application which had been lodged in the European proceeding (tax to be paid in accordance with British law, and examination of the application reserved for the British Trade Mark Office).
Of course, there are further aspects about trademarks and Brexit, and it is difficult to avoid further considerations.
Milano, 19 February 2020
