The United Kingdom officially left the EU on 31st January 2020. However, the effects of Brexit have been pushed back to 31st December 2020. How will this impact how your brand is protected? You can protect your trademark in the United Kingdom either at a national level by registering it with the British Intellectual Property Office, or, as many brands have done for the last 25 years, by registering a brand as a European Union Trade Mark (EUTM), formerly a Community Trade Mark. Indivisible, this trademark covers the 28 member states of the European Union but, from 1st January 2021 the United Kingdom will no longer be included. What happens to EUTMs that are already registered? Will they be protected in the UK from 1st January? VitaBella Luxury & Lifestyle works with numerous experts in order to help their clients with their brand strategies around the world. In the world of luxury, whether we are talking about wine, cosmetics or jewellery, for example, trademark protection is of major importance. In this interview, we asked Guillaume Marchais – a partner in the Marchais & Associés law firm – to explain more fully the consequences that Brexit will have on European trademark protection.
Will Brexit endanger the trademarks of estates, châteaux and Champagne houses?
Guillaume Marchais: “No. They will not be in any danger, but first we need to define the status of their European trademark. Will it already be registered by 31st December 2020 or will it still be going through the process on that date? The two cases are very different.”
What is the situation for EUTMs that are already registered on 31st December 2020?
Guillaume Marchais: “Registration is the final step for a trademark, which is first filed and then registered after a few months if there are no objections or opposition. Companies or wine producers who have a registered EUTM will automatically be attributed new, equivalent rights in the UK, called mirror rights, which will come into force the moment the UK leaves the EU. So, from 1st January 2021, all registered European trademarks will be treated in the UK as if they had already been applied for and registered under UK law, and British authorities will create national trademarks. These national rights will bear the same applied for/registered dates as their corresponding EU trademarks; they will be “clones” of the original EUTM. However, once created, these new national titles will be independent and can be contested, assigned, licensed out or renewed independently to European designs or trademarks. Be careful though, because these need to be renewed at the same time as the European trademarks on which they are based. Lastly, it is important to note that no taxes will be payable when these new titles are created.”
So what about trademarks whose registration is under consideration on 31st December 2020?
Guillaume Marchais: “For trademarks that are still being considered on the day the United Kingdom leaves the EU, i.e. those recently filed, there will be no automatic conversion to a British national trademark. However, it will be possible to file for a national trademark in the United Kingdom, claiming the earlier, European application date. To be able to validly claim the earlier, EU trademark application date, a request must be made to the United Kingdom within nine months of the day the UK leaves the EU. The trademark will then be treated as a British application and considered in accordance with British law. In this scenario there will be taxes to be paid.”
Aside from trademarks, what about community designs that protect shapes or drawings?
Guillaume Marchais: “A great many estates and châteaux ask us about this, as well as their trademark, because it’s also an important element that differentiates their brand from others. The same will apply to community designs protecting shapes (of bottles) or drawings (on labels for example): registered designs will automatically be converted into identical UK registered designs for free, while community designs that have been applied for but not yet registered will have to be the subject of a new registration in the UK within nine months from 1st January 2021.”