Apr 08

UKIPO provided details of changes to its trademark right, registration numbering, registration, opt-out and extensions: www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks 2.1 Registration of trademarks and similar British designs with respect to trademarks and designs inscribed in the Madrid Agreement Protocol, Article 56 of the opt-out agreement simply provides that holders of these rights receive protection for their trademarks and designs in the United Kingdom, without specifying how to achieve this. Holders of EU trademarks registered before the expiry of the transition period automatically acquire a registered (and enforceable) UK right free of charge. Please note that the IPO in the UK will only create a comparable UK brand for registered and issued EUTMs before 1 January 2021. Following the conclusion of the withdrawal agreement for the divorce phase, paving the way for the formal approval of Brexit on 31 January 2020, thus opening the “transition period” until 31 December 2020, the EU and the UK are negotiating the “future relations” phase. They must agree, by the end of the transition period, on a free trade agreement that governs future relations; If they are unable to do so, their relationship will be governed by the general rules of the World Trade Organization. These newly created British trademarks are independent of international registration and are governed by British law. Owners must manage them directly with UKIPO. In accordance with Article 54, paragraph 5, point b), of the withdrawal agreement, comparable British trademarks cannot be revoked, since the EU mark had not actually been used in the United Kingdom before 1 January 2021. As a result, infringement proceedings opened before January 1, 2021 will continue.

While the EU trademark and design courts retain jurisdiction in the EU-27 and the UK, this does not answer the question of the recourse they can grant or, more generally, the content of their decisions.

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