Foreign Trademark Law

The Impact of BREXIT and EU Trademark Registrations

December 22, 2020

As you likely know, due to the United Kingdom leaving the European Union (Brexit), current European Union (EU) Trademark Registrations will no longer cover the territory of the United Kingdom. However, existing EU Registrations will continue to cover the remaining EU countries.

There is no cause for concern since the United Kingdom Intellectual Property Office (UK IPO) is automatically “cloning” all EU trademark registrations into new UK trademark registrations. The UK Registrations will retain the same filing date and renewal date as the EU registrations. The Registration Numbers for the new UK Registration will be the EU Registration Number with the prefix 009.

The UK trademark registrations will be fully independent registration governed by UK law—with the ability to be challenged, assigned, and/or licensed separately from the original EU trademark. In the event of a challenge to a UK registration, proof of use of the trademark in the UK will be necessary. Conversely, to defend an EU Registration, evidence of use will be needed in at least one of the other EU countries.

If the EU Registration is a Designation of an International Registration, the cloned UK Registration will be an independent UK Registration which will need to be managed and renewed separately from your International Registration. Alternately, the UK can be Subsequently Designated in an existing International Registration to allow for renewals, assignments, changes of name, etc. to be made in one place. Please contact us if you are interested in incorporating the UK into an existing International Registration.

If you have EU Designs, they will be similarly cloned in the UK. However, Brexit will not affect any European patent applications or patents since the European Patent Organization is established under the European Patent Convention (EPC), which is an international treaty independent of the EU. The UK will continue as an EPC member state.

Please contact us if you have any questions about your trademark, design or patent coverage.

Trademarks: First Madrid Protocol Affidavits Coming Due

January 26, 2010

In a recent blog update (link below), USPTO Director David Kappos issued a reminder that the first affidavits for extensions of trademark protection issued under the Madrid Protocol will be coming due between February 1, 2010 and February 1, 2011.

The Madrid Protocol is a procedure by which trademark filers may apply for a single international registration which may then be “extended” to individual member countries.  Depending on the circumstances, this can result in significant savings for the registrant when protection in multiple countries is desired.  The United States became a member on November 2, 2003 and subsequently began issuing extensions of protection to qualified applicants on February 1, 2005.

As with traditional US federal trademark filings, registrants using the Madrid system are required to file affidavits of commercial use or excusable nonuse to keep their extensions of protection in force starting with the fifth year after registration.  However, there are some discrepancies between the two systems concerning the statutory procedures and limitations for filing affidavits.  For example, the US federal system allows a six month grace period for filing affidavits.  For registered extensions of protection, however, there is currently no grace period for the first affidavit and only a three month grace period for subsequent affidavits.  Trademark registrants and their counsel need to be aware of these differences, as a missed deadline can result in cancellation.

Director Kappos’ blog post referenced above makes it clear that although the USPTO supports legislative changes to bring the two statutory schemes into agreement, the Office will continue to enforce the filing deadlines as mandated under the current statutes.  Trademark practitioners and registrants would therefore be wise to begin reviewing their portfolios and docketing procedures to ensure that all relevant deadlines are being met for extensions of protection issued starting in 2005.

Link to Director Kappos’ blog entry: USPTO Blog