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Trademarks In Post-Brexit World
Brexit, an acronym for the terms “Britain” and “exit,” refers to the United Kingdom’s (UK) withdrawal from the European Union (EU) on January 31, 2020, at 23:00 GMT. Under the terms of a transition period, which ended on December 31, 2020 (defined in legislation as “IP Completion Day”), the U.K. continued to follow EU regulations.
Post-Brexit is the period following the United Kingdom’s exit from the European Union. The UK’s departure from the EU has specific legal repercussions in terms of trademarks.
The UK has remained a participant in the EU trademark system even though it was in the transitional phase. The UK continues to benefit from the protection granted to EU trademarks, and UK courts continue to follow the relevant EU law.
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Does Your Brand Fit The Criteria To Be Registered In The UK As A Trademark?
For any new UK trademark application, the trademark must be distinctive and can comprise any of the following:
- Words, logos, strap lines, slogans, logos, designs, letters, numbers, the shape of goods, or even packaging can be registered as trademarks.
- one can also register unusual trademarks such as colors, sounds, and smells.
The following content is not eligible for a UK trademark application:
- Offensive content, for example, swear words or inappropriate imagery.
- A term that expresses the goods or services it refers to directly, such as the word “food,” cannot be included in a trademark for a corporation that produces food.
- The IPO gives an example of misleading terminology where the term “organic” is applied to products that aren’t organic.
- A phrase that is overly general and nondescriptive, such as the assertion “we’re better than the rest.”
- According to the World Intellectual Property Organization’s regulations, images that are excessively like national emblems like flags or seals are likewise prohibited.
Types Of Trademarks In The United Kingdom
Words: The most common sort of trademark is the word mark, which is only made up of text. Regardless matter how it is portrayed graphically, the registered text is owned exclusively by the word mark’s owner. A word mark would be “SONY,” for instance.
Sounds: Do you know that a sound can be filed as a trademark? An MP3 file can be used as distinctive identification for a brand like an attractive and unique logo.
The “I’m Loving it” jingle from McDonald’s and the ringtone for Airtel are two examples of sound trademarks.
Logos: Logo marks that are just logos or images without any words, letters, or numbers or that combination of a logo with a word that contains letters and/or numbers. The UK trademark registration is WARD & W Device, which includes the word WARD.
Colors: This is another innovative technique to use color trademarks to safeguard the business. A single color or a group of colors can be used as a trademark. Owning an entire color is a very strong level of protection, but it is difficult to achieve.
Trademarks Filing During The Transition Period And After The Transition Period
During this transition phase, neither IPO services nor the UK IP system has altered. After the transition period, the IPO converted roughly 1.4 million EU trademarks and 700,000 EU designs into corresponding UK rights, which are in effect from January 1st, 2021.
The majority of trademark applications during the transition period are made in August 2020 (32,204), while the fewest applications (280) are made in June 2020.
Most trademark applications after the transition period are made in December 2021 (23,452), while the fewest applications (7380) are made in February 2021.
Notable Changes In Post-Brexit UK Trademark
- Creating & Numbering the Comparable UK Trademark:
Generating the equivalent UK trademarks in the UK register, for all protected international (EU) trademark designations and the creation of comparable trademarks are free of charge to the owner of the international trademark.
After January 1, 2021 (completion of the transition period), international trademark registrations protected in the EU under the Madrid Protocol are no longer be protected in the UK.
The initial foreign registration may be contested, assigned, licensed, or renewed separately from each new UK right, which will be considered as if it were sought for and registered in accordance with UK law.
The filing and registration dates of a similar trademark will coincide with the date of international registration if the EU was specified in the respective international application and future UK renewals will also take place on this date.
The final 8 digits of the international (EU) trademark with the prefix UK008 is used as the number assigned to the comparable trademark to identify UK rights derived from international registrations and identify them apart from already registered UK trademarks.
The following examples demonstrate how comparable UK trademarks will be codified:
Comparable UK Trademark
917273 (no sub designation, no partial assignment)
917273A (no sub designation, partial assignment)
1133775 (Sub designation, no partial assignment)
421058A (Sub Designation & partial assignment)
- Option of receiving a UK comparable trademark:
The receipt of a UK equivalent trademark is optional for owners of protected EU trademarks and if they don’t wish to hold the new right. If they want to opt-out, must submit a brief notification with the international registration number and information of any individuals who have registered interests in the right. So, the comparable trademark will be treated as if it had never been applied for or registered under UK law.
- Pending applications:
If applicants hold a pending EU designation at 11 pm on 31 December 2020, they can still seek to register the same trademark in the UK and have the benefit of a deemed earlier filing date that corresponds to the pending EU designation. In most circumstances, they must do this by applying to register the UK trademark on or before September 30, 2021, nine months after the end of the Transition Period.
A small number of EU designations that were granted dates on or after December 31, 2020, when the international registration designating the EU or the subsequent EU designation was recorded in the International Register, may still be pending at 11 p.m. on that date.
In certain situations, the international registration date, or the date the subsequent designation was registered in the international register serves as the start date for the nine-month timeframe to re-file the mark in the UK.
For such applications, this means that the option to keep the earlier filing date may continue through September 30, 2021.
- Pending applications to transform an international registration:
Owners may submit a UK trademark application if their international registration has been canceled and the request to convert their international trademark (EU) into an EU trademark is still pending as of January 1, 2021.
- Validity of ‘new’ UK expiry date:
The ‘new’ UK expiry date adopted by the comparable trademark will be redundant in the following circumstances:
The UK expiry date will not take effect until the related international registration has been renewed at WIPO if the EU subsequent designation pertains to an international registration that has expired in the six months before 1 January 2021 and has not yet been renewed.
- Effect of priority date and seniority of trademarks:
The similar UK trademark will inherit any priority date asserted under the Paris Convention that has been recorded against the relevant international (EU) trademark. When legal proceedings involve a comparable UK trademark with a priority claim inherited from the relevant international (EU) designation, the date of that priority claim will be relevant.
From January 1, 2021, seniority is applied to UK trademarks that are derivations of international EU designations and EUTMs. A company’s ability to combine all its national registered trademarks into a single international (EU) designation is determined by its seniority (or EUTM). The start date of an existing international (EU) designation can be determined by seniority. We have made sure that claims of seniority based on earlier international, or UK trademarks will be taken into consideration.
Key Things To Know In Post-Brexit UK Trademark
Below we have listed a few things to know about Brexit and trademarks.
- All EU trademarks (EUTMs) registered as of December 31, 2020, are automatically converted into a UK right (a “similar UK trademark (EU)”) that preserves the same priority, filing, seniority, and renewal dates as the EUTM. The creation of the UK right will be free of charge.
- On December 31, 2020, any oppositions or legal actions brought against EUTM applications or registrations that are solely based on former UK rights would be automatically rejected.
- Legal counsel from the UK may keep representing clients in proceedings that are still pending as of December 31, 2020, before the EUIPO (and the Court of Justice). Anyone may still apply for the registration of a EUTM.
- The rules will prohibit providing an address for service for a UK trademark or application outside of the UK, the Channel Islands, or Gibraltar beginning on January 1, 2021. The remaining EU or EEA are no longer acceptable addresses for service.
- On December 31, 2020, any legal actions current in the UK courts involving the legality or infringement of an existing EUTM changed to legal actions involving the next equivalent UK trademark (EU).
- The laws governing relevant torts (such as trademark infringement and passing off) and standing to litigate in the UK are the same.
- Being a party to the Hague Convention on Choice of Court Agreements, the UK courts continue to recognize and give effect to exclusive jurisdiction agreements, including those granting the UK’s courts authority over licenses of trademarks outside of the country.
- Because the UK is a signatory to the Hague Convention on Choice of Court Agreements, its courts continue to recognize and enforce agreements allowing them exclusive jurisdiction over certain matters, including licenses of trademarks outside of the UK.
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