Law & Practice

UNITED KINGDOM: Brexit and International Registrations Designating the EU

Published: October 14, 2020

Nina O'Sullivan

Nina O'Sullivan Mishcon de Reya London, United Kingdom INTA Bulletins—Europe Subcommittee


Leighton Cassidy

Leighton Cassidy Fieldfisher LLP London, United Kingdom INTA Bulletins—Europe Subcommittee

The government of the United Kingdom has set out arrangements in relation to International Registrations (IRs) protected in the European Union under the Madrid Protocol after the end of the Brexit transition period, from January 1, 2021.

It had been agreed in the EU/UK Withdrawal Agreement that such trademarks would continue to enjoy protection in the UK post-Brexit. However, the UK Intellectual Property Office (UKIPO) and World Intellectual Property Organization (WIPO) had been discussing whether the new rights to be created would remain within the Madrid Protocol regime, that is, as a designation of the IR, or would be independent UK rights.

It has been confirmed that comparable UK trademarks will be created, automatically and at no cost, for all protected international (EU) trademarks, which will operate as independent rights governed by UK law. They will be prefixed with “UK008” and allocated the last eight digits of the international (EU) trademark. They must be renewed separately at the UKIPO.

Both the UKIPO and WIPO have issued guidance notes, which include the following key points:

  • Where the EU is designated more than once in an IR (for example, in the original application and then through a later-filed subsequent designation), a comparable UK trademark will be created for each designation protected in the EU. Multiple comparable UK trademarks could therefore correspond to a single IR.
  • Where an EU designation is pending on January 1, 2021, there will be a nine-month priority window to apply for a UK trademark and to retain the filing date of the pending EU designation. This includes EU designations requested before January 1, 2021, but which are not at that point subject to a statement of protection issued by the EUIPO. It also includes IRs that have been cancelled, where there has been a request to transform an international trademark (EU) which is pending on January 1, 2021.
  • After January 1, 2021, the holder may subsequently designate the UK in the IR upon which the comparable UK trademark is based. This designation would then replace the comparable UK trademark, leading to centralized management. The holder can request that the UKIPO take note of the replacement in the UK Register. However, the UKIPO would examine a subsequent designation of the UK and it would be published for opposition purposes.

INTA has published a dedicated paper on this issue, submitted to the UKIPO on March 19, 2018, stressing that, “Article 52 of the draft withdrawal agreement provides for measures to ensure that holders of international trademark registrations designating the European Union (EU) under the Madrid Protocol who have obtained protection in the EU for such international registrations before the end of the transition period will enjoy protection in the United Kingdom for their trademarks in respect of those international registrations after the end of the transition period.”

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2020 International Trademark Association