Differences between UK and EU trade mark applications
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At the end of December 2020, the Brexit transition period ends and the UK will drop out of the EU trade mark registration system. Plans are in place to enable those who have existing EU registrations to continue to receive protection in the UK, but what does this mean for future trade mark applications?
For all businesses who trade around Europe this means that it will no longer be possible to rely on a single EU application to cover both the United Kingdom and the twenty-seven countries which remain in the EU; it will be necessary to file both EU and UK applications (and to consider filing in non-EU countries, notably Switzerland, Norway and Turkey). For UK-based companies, this change is likely to push trade mark applicants towards making use of the Madrid Protocol.
There are two routes to obtain trade mark protection in most territories; it is possible to file a direct national application (or a direct regional application such as an EU application, a Benelux application, a Gulf Cooperation Council application, an OAPI application etc.); for some territories it is possible to file a Madrid Protocol application with WIPO and to designate various territories. Most, but not all, commercially important territories, including the EU, can be designated in a Madrid Protocol application.In order to file a Madrid Protocol application it is necessary first to file a home application which, for a UK company, will usually be a UK trade mark application. Thereafter the Madrid Protocol application can be filed and based on the UK application. There is a fairly high base cost to file a Madrid Protocol application designating one territory (e.g. the EU) but additional territories may be designated at the same time at a relatively low marginal cost.
This means that for UK applicants who wish to seek protection in the EU and also at least a couple of additional territories, it is likely that the Madrid Protocol route will be cheapest. As a result, we expect an increase in the filing of Madrid Protocol applications, based on UK application or registrations, designating the EU and other territories. Applicants may well start to include Switzerland, Norway and Turkey which are frequently omitted due to the cost of direct national applications in those countries. That being said, it is important to appreciate that the Madrid Protocol has a number of disadvantages:
In short, with the departure of the UK from the EU, many businesses will find that they wish to file both UK and EU trade mark applications and those who wish to seek protection in a number of other territories are likely to wish to at least consider using the Madrid Protocol.
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