Brexit Update - WIPO Issues Statement on International Trade Marks

Since the annoucement of Brexit, trade mark holders and advisers have contemplated the likely effects of the UK's departure on international trade marks.

The UK has now entered a Withdrawal Agreement allowing the nation to formally exit the EU on 31 January 2020.

Under the Agreement, a transition period until 31 December 2020 has been established to allow for the UK to engage in negotiations and make any necessary legislative and administrative changes. These changes will need to address the treatment of EU intellectual property rights, including trade marks registered or pending in the EU. 

On 30 January 2020, the World Intellectual Property Organisation (WIPO) released an Information Statement to provide an update on its approach to Madrid Protocol International Registrations designating the EU. 

How did we get here?

The Madrid Protocol international trade mark system is administered by WIPO. Under the Madrid System:

• an applicant may file for an "International Registration" based on a trade mark application or registration in their home country;
• the applicant needs to nominate (or "designate") the territories in which they request trade mark protection - this can include the European Union;
• once the International Registration is granted by WIPO, the trade mark is then processed by the designated territories' IP Offices (in the case of the EU, trade marks are administered by the EUIPO);
• if the designated territory grants protection, the trade mark is then legally recognised within that territory;
• renewals and other administrative functions are performed via WIPO, rather than the designated territories.

Under the EU's membership rules, trade marks registered in the EU are, in turn, legally recognised and protected by the UK and each of the other EU member states.

However, Brexit raised the question of what would happen to those existing and pending EU trade mark rights in the event of the UK leaving the Union, and what steps could - or should - be taken to preserve rights holders' intellectual property protection.

Previous Guidance

In March 2019, the UK Intellectual Property Office (UKIPO) - which administers trade mark registrations in the UK - provided a guidance statement to outline the UK's intentions upon a "No Deal" Brexit coming into effect. The UK's guidance was shortly followed by an Information Statement from WIPO outlining their intended approach in the event of a "No Deal" Brexit.

That guidance indicated that the UK would continue to recognise EU trade marks under a "No Deal" scenario.

For more, you can read our earlier post on this guidance here. 

Updated Guidance from WIPO

WIPO's new Information Notice released on 30 January 2020 sets out WIPO's position now that a formal Withdrawal Agreement has been entered.

In summary:

• A transition period will apply from 1 February to 31 December 2020.
• During the transition period, EU trade marks registered under the Madrid Protocol will remain in force in the UK.
• The UK government will ensure that EU trade marks registered as at the end of the transition period will remain in force in the UK after the transition period ends. (This would require specific legislation from the UK).

It is important to note that the Information Notice does not address:

• how the UK will deal with EU trade marks that are still pending (ie not yet granted registration) at the end of the transition period;
• the status of EU trade marks that have been registered or applied for outside the Madrid Protocol system (such as via a direct application to the EU Intellectual Property Office);
• the specific method by which protection will be granted by the UK, and how this will interact with the corresponding Madrid Protocol International Registration;
• arrangements for administrative functions, such as renewals and amendments.

The answers to these questions will need to be determined as the Brexit process works to a conclusion.

The full text of the Information Notice (No. 2 / 2020) (The Official PDF Notice can be downloaded here) is as follows:

Madrid Protocol Concerning the International Registration of Marks

Agreement on the Withdrawal of the United Kingdom from the European Union: Implications for International Applications and Registrations Under the Madrid System

1. The Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (hereinafter referred to as “the Withdrawal Agreement”), provides for a transition period starting on February 1, 2020, the date on which the United Kingdom will leave the European Union, and ending on December 31, 2020.

2. The International Bureau of the World Intellectual Property Organization (WIPO) wishes to inform users that international registrations under the Madrid System for the International Registration of Marks (the Madrid System) designating the European Union, including those designations made during the above-mentioned transition period, will continue to have effect in the United Kingdom during this period. Furthermore, nationals of the United Kingdom and those who are domiciled or have a real and effective industrial or commercial establishment in the United Kingdom and in whose name stands an application or registration with the Office of the European Union, may continue to file international applications with this Office, as Office of origin, during the transition period.

3. Finally, under the Withdrawal Agreement, the United Kingdom will take measures to ensure that holders of international registrations under the Madrid System that have obtained protection for their marks in the European Union before the end of the transition period continue to enjoy protection for those marks in the United Kingdom after this period has ended. The International Bureau of WIPO will provide more information on the above-mentioned measures as soon as further details become available.

January 30, 2020

Caution still Needed

As the Brexit outcome is still developing, and will for some time depend on further negotiations and legislation within the UK, caution is still necessary for trade mark and other IP right holders in the UK and EU. Of course, the above guidance from WIPO is subject to change as the Brexit negotiations and transition period progress.

IP right holders and applicants for IP protection in the UK and EU are strongly encouraged to seek professional advice on their specific circumstances to ensure their IP rights are protected and to develop strategies to manage the impact of Brexit.