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Brexit and European Trademarks: What You Need to Know

By John DiGiacomo

At the end of January 2020, the United Kingdom (“UK”) filed formal papers with the European Union (“EU”) to withdraw from the political and economic alliance. This has commonly been called “Brexit.” For the next year or so, the UK will remain loosely affiliated with the EU, but at the end of the transition period, the UK will officially separate and regain its former status as a fully independent nation.

Brexit has raised numerous legal questions including how trademark rights will be impacted. The legal issue is that trademark rights, legal protections and registrations are governed by national law. For example, in the United States, the Lanham Act governs trademarks at the federal level. See 15 U.S.C. §§1051 et seq. To obtain registration of a trademark, a trademark owner must apply for registration with the US Patent and Trademark Office. A US trademark registration is only effective in the US.

To obtain trademark registration in other nations, applications must be filed in the applicable jurisdictions or an international treaty must be used. Many decades ago, this meant a US company seeking to register a trademark all over Europe was required to make filings in every nation where the mark was being used. However, as the EU grew — expanding eventually to 28 nations — it became possible to make one registration application with the European Union Intellectual Property Office. With one registration, owners of a European Trademark (“EUTM”) were able to obtain legal protections for their trademarks in all EU-member-states. While the UK was part of the EU, an EUTM was valid and enforceable in the UK.

However, with the UK leaving the EU as of January 31, 2021, this meant that, in theory, an EUTM would not be protected in the UK and that a UK trademark would not be protected in the remaining parts of the EU. However, the UK and the EU have already negotiated acceptable legal principles and procedures to cover the transition and post-Brexit periods which were set out in Title IV the Withdrawal Agreement. In short, here is what was agreed:

  • Transition period: existing EU trademark rights will be honored in the UK during the transition period
  • Post-Breit: existing EU trademark rights will be honored in the UK post-Brexit — in common terms, the EU trademark registrations will be “cloned” so that separate UK registrations will be created; post-Brexit UK trademark rights will be honored in the EU
  • Finalized applications: EU trademark applications that are pending during the transition period and that are finalized before January 31, 2021 will also be honored in the UK in the same manner
  • Non-finalized EU applications: EU trademark applications NOT finalized before the end of the transition period will terminate as to the UK; those applications will proceeds with respect to the EU, but to obtain protection in the UK, applicants will need to file an application with the UK trademark office or use mechanisms provided by an international treaty like the Madrid Protocols
  • Other post-Brexit: With respect to renewals of trademark registrations and other trademark maintenance-related filings in the UK, after January 31, 2021, those will have to be made with the UK trademark office

As noted, there are certain international treaties that allow a trademark holder to file one application for registration that would be applicable in multiple jurisdictions. The Madrid Protocols are an example and there are about 115 signatory nations to the Protocols, including the UK. The UK’s status as a signatory to the Madrid Protocols will not be affected by Brexit. If you cannot get an EU trademark application completed before January 31, 2021, filing under the Madrid Protocols may be an option. On the other hand, filing with the UK trademark office may be just as quick and effective. An experienced and proven trademark attorney can provide advice and counsel on which option best meets your unique needs.

If you have questions about creating and registering a US or international trademark, contact the proven and experienced trademark lawyers at Revision Legal at 231-714-0100.

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