February 22, 2018

Impact of the United Kingdom’s withdrawal from the European Union on European Union Trademarks and Community designs

It is planned that as of 30 March 2019, the Treaties of the European Union cease to apply to the United Kingdom.

The European Union Intellectual Property Office (EUIPO), following the recommendations of the European Commission, has prepared a list of questions and answers, for information purposes only, regarding the situation in which EU trademarks as well as registered Community designs would be in case the United Kingdom withdrew from the European Union without agreement between the negotiating parties.

The published document addresses many issues of interest to holders of EU trademarks (and Community designs) such as ownership of EU trademarks, the scope of protection of EU trademarks and the maintenance of rights conferred to EU trademarks.

Among the highlighted issues in the published document there is the fact that as from the withdrawal date, EU trademarks (and designs) will cease to be protected in the UK. Moreover, there is not any provision in the Regulations stating that EU trademarks can be partially transformed into a UK trademark.

Likewise, as from the withdrawal date, use of the EU trademark in the UK does not qualify any more as “use in the UE”. On the contrary, use of a EU trademark in the UK before the withdrawal date constitutes “use in the UE”. However, the relevance of this will decrease the years after the withdrawal date, until it becomes totally irrelevant 5 years after withdrawal.

Another of the issues addressed concerns the claim of priority or seniority of UK trademarks. The priority of a UK trademark can be claimed for trademark applications filed in any state of the Paris Convention and also in EU trademarks. However, seniority on European Union trademarks may only be claimed in trademarks registered in any country of the European Union.

The same provisions apply mutatis mutandis to Community designs.