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Taylor Wessing comments: hard BREXIT in the area of trademark protection

Company: TaylorWessing e|n|w|c advokáti v.o.s.

With regard to the approaching date of 29 March 2019, when the United Kingdom of Great Britain and Northern Ireland is due to withdraw from the European Union, the law firm Taylor Wessing Czech Republic has prepared a brief information on the most crucial impacts of hard Brexit on Czech businesses from the point of view of trademark protection on the territory of the UK. Hard Brexit means a situation in which the British Parliament does not agree to an EU withdrawal agreement, nor does it agree to postpone Britain's exit from the EU, and Britain will leave the EU without any agreement.

Karin Pomaizlová, a partner at Taylor Wessing Czech Republic, states: "Brexit will have an impact on EU industrial rights (EU trademarks and EU designs). Britain has adopted national legislation that includes hard Brexit scenario. In case of hard Brexit, the owners of registered EU trademarks will automatically become owners of the national trademarks valid in the United Kingdom on March 29, 2019. No additional applications, administrative acts, or fees will be required; these trademarks will retain the date of priority and remain valid for the duration of their validity only in the territory of the United Kingdom. Owners of such national trademarks will be able to refuse such protection on an opt-out basis."

If, however, Czech businesses have only pending EU trademark applications before 29 March  2019, applicants will need to seek trademark protection in the United Kingdom by filing a new application with the relevant UK Industrial Property Office (see https://www.gov.uk/government/organisations/intellectual-property-office).

And Pomaizlová adds: "In this case, it is necessary to pay the registration fee again, and the application will be subject to a formal and substantive examination by the British authority; it will be possible to file new oppositions and observations under British law, even if the time-limit for filing oppositions before the European Union Intellectual Property Office (EU IPO) has already expired. This application will have a priority date according to the original EU trademark application."

If Czech businesses have an EU trademark or have applied for an EU trademark and are not interested in protection in the UK, they do not have to do anything. If a registered EU trademark already exists, the protection of these trademarks will also be automatically granted on the territory of the UK on the basis of the prepared legislation for hard Brexit.

Pomaizlová points out that: "In case of EU trademark applications, applicants will have nine months from hard Brexit to submit a new application for the territory of the UK while maintaining the priority. All this applies, however, only in case hard Brexit scenario occurs. Regarding newly submitted trademark applications, it is now possible to file applications for both EU and national trademarks for the territory of the UK, respectively to file an EU trademark application, and within 6 months under the Paris Union Convention, to file a national application in the UK while maintaining the priority of the original application for the EU trademark, depending on how Brexit eventually ends."

Under the current situation, the same regime should apply to international registration of trademarks with designation for the EU. For the time being, owners of newly created UK national trademarks will not need to have an address for delivery in the UK, but this can be expected to change over time.

With regard to ongoing opposition proceedings before the EU IPO concerning EU trademark applications, affected applicants may theoretically benefit from hard Brexit, where (i) the opposition has been lodged against their trademark application on the basis of national laws in force in the UK; or (ii) the opponent based its opposition on the reputation of its earlier EU trademark gained only on the territory of the UK; or (iii) the earlier EU trademark was used only in the UK. It is possible that UK-related rights will not be taken into consideration by the EU IPO in opposition proceedings after hard Brexit. However, the final decision on this issue will eventually have to be made by the Court of Justice of the EU.

As far as licensing rights are concerned, according to the UK legislation prepared for the case of hard Brexit, current EU trademark licences should continue to apply in the UK unless the parties have agreed otherwise. However, in case of hard Brexit, the licence shall be re-registered at the British Industrial Property Office.

Pomaizlová adds: "Brexit can be expected to give rise to a series of fraudulent demands for payment of fees for British trademark charges based on fraudulent invoices that appear to have been issued by the British Intellectual Property Office. Therefore, without consulting an industrial rights expert, businesses should not pay any invoices they receive from unknown entities as industrial property offices do not issue any invoices."

For eventual approval of the EU exit agreement, any changes would have occurred as of 31 December 2020. Depending on the developments as of 29 March 2019, Taylor Wessing Czech Republic will in due time provide further information.

More detailed information from our Taylor Wessing London colleagues can be accessed below:

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