Legal updates and opinions
Post Author
News / News
B= BREXIT – ADVICE TO BRAND OWNERS
By Donvay Wegierski, Director
The initial Brexit date of 29 March 2019 was re-scheduled to 31 October 2019 – deal or no deal.
Our advice to date concerning trade marks is that separate trade marks should be filed in the UK in addition to the EU to avoid the inevitable administrative delays at the UK Intellectual Property Office (“UKIPO”) in the event of a “no deal” Brexit. This is particularly so if the UK is a trading partner and brand owners are advised to review current UK and EUTM trade mark portfolios and if there is no separate UK mark consider the following:
| A “DEAL” BREXIT | All EUTM trade mark registrations will be considered in force and effect in the UK with a transition period until at least December 2020. | |
| A “NO DEAL” BREXIT | EUTM Registrations | Registrations will automatically replicate to the UK as “comparable trade marks (EU)” identifiable by UK009. No further action is required, no additional official fees apply. |
| EUTM Applications | It will be necessary to file an application to the UKIPO for the grant of a UK replica application on payment of a fee. |
|
| Opposed EUTM’s | It will be necessary to file an application to the UKIPO for a UK replica application on payment of a fee. | |
| Pending cancellation application against an EUTM | A new cancellation action may be required in the UK against the “comparable trade marks (EU)”. | |
| Renewals | Two separate renewals will apply for the EUTM and the “comparable trade mark (EU)” when due. | |
| Non-use cancellations |
A trade mark is vulnerable to cancellation for non-use by any interested third party if it has not been used for a period of five years or longer after registration. Currently, as an EUTM includes the UK any use of the mark within the UK could assist in defending a non-use cancellation against an EUTM. On Brexit, use in the UK from then will not be taken into account which brand owners should be aware of. It is not uncommon to refile trade marks that are vulnerable to cancellation, albeit it defensively. |
*A EUTM covers all 28 member countries of the EU, namely Austria, Belgium, Bulgaria, Cyprus, The Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the UK.
Should you require any clarity on the above or assistance with reviewing your current position in the EU please contact our Intellectual Property Team.
Latest News
Obtaining authorisation to process special personal information demystified
1. Processing of Special Personal Information On 28 June 2021, the Information Regulator published its "Guidance Note on Processing of [...]
Eye spy with my little eye… Template PAIA Manuals published by the Information Regulator
Updated PAIA Manual templates for private bodies To kick off the beginning of Access to Information month, the Information Regulator [...]
Top ten risks for creditors of companies going into Business Rescue in 2021
Chapter 6 of the Companies Act No. 73 of 2008 Continued pressure on business and world economies due to the [...]
Information officers take note!
Promotion of Access to Information Act, 2000 regulations 1. The long-awaited Promotion of Access to Information Act, 2000 regulations ("the [...]
Advancing credit to financially distressed companies – warning signals for suppliers and creditors?
Advancing credit to financially distressed companies Continued pressure on business and world economies due to the ongoing battle with the [...]
A bank’s choice of forum – what does the law say?
Setting the Scene It is common practice for consumers to take up mortgages and purchase motor vehicles on credit from [...]
