UNITED KINGDOM: Brexit’s Impact on Madrid Trademarks Designating EU

The United Kingdom officially left the European Union on January 31, 2020, entering a transition period which is likely to end on December 31, 2020. There is an option to extend the transition period for a further two years, but the UK government has indicated that it has no intention to do so and has legislated accordingly. In the event an extension to the transition period is however agreed, the UK and EU would need to do so in advance of a July 1, 2020, deadline. As such, December 31, 2020, should be treated as the end of the transition period. As discussed here, the status of international trademarks after the transition period ends remains uncertain. The Intellectual Property Office of the United Kingdom (UKIPO) and the World Intellectual Property Organization (WIPO) are considering the status of cloned rights.

Status of International Trademarks Until December 31, 2020

During the transition period, there will be no impact on international trademarks registered under the Madrid Protocol, including those registered during this period. All international trademarks which have designated the EU will remain protected in the EU and the UK during the transition period.

Status of International Trademarks as of January 1, 2021

International trademarks protected in the EU will no longer be valid in the UK as of January 1, 2021.

However, under the Withdrawal Agreement, the UK will take measures to ensure international trademarks which have secured protection in the EU prior to December 31, 2020, will continue to be protected in the UK.

These rights created—or cloned—from international trademark registrations will be identifiable as they will be prefixed with “UK008.” No certificates of registration will be issued, but trademark owners will be able to access this information online.

On January 30, 2020, the UKIPO and WIPO advised they are discussing options on what form protection for international trademarks protected in the EU will take once the transition period concludes. It has yet to be determined in those discussions whether the UK rights created will still be part of the international system or whether they will be treated as UK national rights.

INTA’s dedicated Brexit Task Force is monitoring the situation and advocating before EU and UK negotiators for maximum intellectual property (IP) protection. INTA published a position paper on International Registrations on July 28, 2018.

More on Brexit and IP, and the work of INTA’s Brexit Task Force can be found here.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2020 International Trademark Association