Brexit: The effects on EU Trademarks
As the transition period agreed to by the European Union and United Kingdom by virtue of the EU-UK Withdrawal Agreement came to an end on the 31st December 2020, the UK is today considered to be a third-country, as it marks the completion of Brexit. This has inevitably brought about a multitude of effects within the legal sphere, notably with respect to EU trademarks (EUTMs) and the procedures with the European Union Intellectual Property Office (EUIPO).
As of 1 January 2021, registered EUTMs no longer protect trademarks in the UK. However, the UK granted all EUTM owners comparable UK trademarks, such that the same trademark will continue to be protected in the UK and will enjoy the same registration details including the same application, registration, and renewal date. Additionally, for the purpose of the comparable UK trademark, the registered EUIPO representative will be recorded as the United Kingdom Intellectual Property Office (UKIPO) representative.
As opposed to registered EUTMs, pending EUTM applications no longer cover the UK territory such that the applicant is now required to apply for a comparable UK trademark by 30 September 2021, for the earlier filing date to subsist.
Notwithstanding that the UK is no longer part of the EU, persons established in the UK may file an application for the registration of an EU trademark. What has changed however for such persons, is that they may no longer be represented before the EUIPO by persons established in the UK. Thus, legal practitioners qualified in the UK, and those qualified in one of the Member States of the EEA and having their place of business in the UK, as well as professional representatives that are UK nationals or nationals of an EEA State having their place of business in the UK or otherwise their representation depends on their entitlement to represent a person before the UKIPO, will not be authorised to act as representatives before the EUIPO.
With effect from the 1January 2021, UK representatives lost their capacity to act before the EUIPO and consequently that have been (i) automatically removed from all files in EUTM and RCD related proceedings, (ii) deleted from EUIPO’s database of representatives (and, where applicable, from the Office’s list of professional representatives), and (iii) not be able to send mail in relation to a file through the EUIPO’s “UserArea”. An exception only arises with respect to pending proceedings before the EUIPO initiated before the end of the transition period where, the duly appointed UK represented on file is entitled continue to represent his/her client.
Therefore, in those proceedings where representation is mandatory, essentially all proceedings before the EUIPO saving for the filing of an EU application, persons established in the UK must appoint an EU representative that is recognised by the EUIPO.
In view of the above, natural and legal persons who are domiciled, or have their place of business or establishment in the UK, are advised to make the necessary arrangements to designate a representative which is duly recognised by the EUIPO so as to ensure proper representation before the EUIPO.
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