{"id":3294,"date":"2020-02-18T12:57:56","date_gmt":"2020-02-18T11:57:56","guid":{"rendered":"https:\/\/barzano-zanardo.snaptest.it\/?post_type=approfondimenti&p=3294"},"modified":"2020-02-18T13:05:54","modified_gmt":"2020-02-18T12:05:54","slug":"brexit-latest-updates","status":"publish","type":"approfondimenti","link":"https:\/\/barzano-zanardo.com\/en\/approfondimenti\/brexit-latest-updates\/","title":{"rendered":"Brexit: Latest Updates"},"content":{"rendered":"

Over ten months have passed since March 29th<\/sup> 2019, the initial date scheduled for our British cousins to leave the European Union, before their effective \u201cexit<\/em>\u201d which was officially completed last January 31st<\/sup> at 23.00 UK time.<\/p>\n

The advantage of this delay was the signature of an agreement resulting in UK\u2019s exit with a \u201cwithdrawal agreement<\/em>\u201d and a transition period lasting until next December 31st<\/sup> 2020 (subject to further postponements, if agreed among the parties within next July), in order to let once again the parties involved \u2013 hopefully permanently this time \u2013 to define all issues arising from such separation.<\/p>\n

With regards to trademarks<\/strong><\/a> and designs<\/strong><\/a> registered before EUIPO until last January 31st<\/sup>, they will remain active in all EU current countries and in the UK as well. Moreover, both the creation of \u201cclone\u201d registrations for EU applications of trademarks and designs already granted and published, and the opening of a nine-months term for the \u201cconversion\u201d in corresponding local British rights of all trademark and designs applications or design registrations with postponed publications will take place on January 1st<\/sup> 2021. Likewise, also international trademark and design registrations according to the Madrid and The Hague Protocol designating EU will remain valid in the UK too until the end of the year and will be then automatically converted in corresponding British \u201cclone\u201d registrations starting from January 1st<\/sup> 2021.<\/p>\n

For those EU registration already granted, it is confirmed that the new British \u201cclone\u201d registrations will be identified for trademarks<\/u> by the prefix \u201cUK009<\/strong>\u201d, while for designs<\/u> by the prefix \u201c9<\/strong>\u201d followed by the number of the corresponding EU registrations, in order to distinguish them from the original British registrations.<\/p>\n

Example:<\/u><\/span><\/p>\n

Trademark:<\/span><\/p>\n\n\n\n\n\n
Registrazione U.E. esistente<\/td>\nRegistrazione inglese \u201cclone\u201d<\/td>\n<\/tr>\n
000000977<\/td>\nUK009<\/span>000000977<\/td>\n<\/tr>\n
000340513<\/td>\nUK009<\/span>000340513<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n

Design:<\/span><\/p>\n\n\n\n\n\n
Registrazione U.E. esistente<\/td>\nRegistrazione inglese \u201cclone\u201d<\/td>\n<\/tr>\n
004048098-0004<\/td>\n9<\/span>0040480980004<\/td>\n<\/tr>\n
000000021-0001<\/td>\n9<\/span>0000000210001<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n

What happens then during this year?<\/u><\/strong><\/p>\n

Basically, as mentioned above, the situation stays the same: trademarks and designs registrations granted by EUIPO remain valid and enforceable in the UK also against subsequent British applications; the use of a trademark in the UK is considered valid in order to attest genuine use of an EU trademark registration; British trademark and design attorneys can still represent their clients and act before EUIPO in the same way and with the same rules as before.<\/p>\n

Is it still possible to file EU trademarks and designs applications with the aim to cover also United Kingdom?<\/u><\/strong><\/p>\n

Absolutely yes. In fact, it is still possible to file a trademark or design application before EUIPO in order to obtain protection in all countries currently members of the EU and in the UK as well. Indeed, EU trademark applications that mature into registration before December 31st<\/sup> 2020 or those design registrations granted and published before such date will be transformed in corresponding British \u201cclone\u201d registrations with no costs for the right owners in terms of registration fees, while for EU trademark applications still pending on December 31st<\/sup> 2020 or pending designs or registered ones with postponed publication it will be possible to benefit from a period of nine months for their \u201cconversion\u201d in corresponding British applications\/registrations, after paying the related taxes as established by the British regulation.<\/p>\n

What aspects should be considered looking at the end of the transition period?<\/u><\/strong><\/p>\n

We are of the opinion that it is important for trademarks and designs owners to benefit of this transition period to adequately evaluate the current EU rights and the commercial interests that every company or individual has or might have in the UK market.<\/p>\n

For example, if a company owns an EU trademark registration which was granted over five years ago and is not vulnerable for revocation thanks to the use in Italy and in the UK, it would be advisable to consider to extend said use to an additional EU country in order to start consolidate it and to be able to vaunt a valid EUTM registration before the end of the transition period.<\/p>\n

What are our suggestions for those who want to file today a trademark\/design application before EUIPO and are interested in protecting their rights also in the UK?<\/u><\/strong><\/p>\n

Of course, such decision depends on several factors, such as filing timings, possible obstacles or issues for trademarks in terms of distinctive character and novelty, potential further countries of interest which might justify the filing of an international application before WIPO designating UK.<\/p>\n

Therefore, it is strongly recommendable to seek the assistance of an skilled trademark and\/or design attorney who can effectively assess the situation and build up the best protection strategy.<\/p>\n

In fact, in the event that a company wants to protect its trademark both in the 27 EU current member States and in the UK, and it is ascertained after preliminary searches that there are no obstacles for registering the mark before EUIPO, said entity can opt for the accelerated procedure called \u201cFast-Track\u201d and if the application is filed soon, it is likely \u2013 if there are no objections or oppositions \u2013 to mature into registration before the end of the transition period and therefore can be automatically transformed into a British registration, without the need to file a local application before UKIPO (UK Intellectual Property Office).<\/p>\n

Our trademark and design attorneys<\/a>\u00a0are at your disposal to provide you with any assessment, clarification and further information needed. Therefore, please do not hesitate to contact us!<\/p>\n","protected":false},"template":"","area":[6],"news-argomento":[40,55],"news-tipologia":[43],"class_list":["post-3294","approfondimenti","type-approfondimenti","status-publish","hentry","area-ip-strategy","news-argomento-design-en","news-argomento-trademark","news-tipologia-insights"],"acf":[],"_links":{"self":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/approfondimenti\/3294","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/approfondimenti"}],"about":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/types\/approfondimenti"}],"version-history":[{"count":0,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/approfondimenti\/3294\/revisions"}],"wp:attachment":[{"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/media?parent=3294"}],"wp:term":[{"taxonomy":"area","embeddable":true,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/area?post=3294"},{"taxonomy":"news-argomento","embeddable":true,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/news-argomento?post=3294"},{"taxonomy":"news-tipologia","embeddable":true,"href":"https:\/\/barzano-zanardo.com\/en\/wp-json\/wp\/v2\/news-tipologia?post=3294"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}