Legal consequences of the trademark with origin in Vietnam and designation EU registered under Madrid system after Brexit
After 47 years being a member of EU, UK officially left EU on January 31, 2020. This is an almost half of century relationship, thus, there would be a number of arising confusion as well as the issue which is in need of negotiation to complete the process including trademark registration with origin from Vietnam.
Trademark protection in Vietnam
UK is the member of Madrid system from Dec 1st, 1995, concurrently, EU has also officially become a member of this system since Oct 1st, 2004. According to the international trademark searching Madrid Monitor, there are 292 Vietnamese trademarks registered internationally designated EU which include both the trademarks during the examination period and granted certificate.
How is the fate of these trademarks after Brexit?
According to the guidance from Intellectual Property Office of UK (“IPO”), the owner or applicant of the trademark which submitted according to the Madrid system and designated EU need to note the following points:
International trade mark registrations protected in the EU (“EUTM”) under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021. According to Brexit Agreement, IPO will create a system: “comparable UK trademark” in relation to each international (EU) trade mark designation. In case EUTM are still in the examination period, the applicant has the right to register that exact trademark in UK in the transition period from January 1st, 2021 to September 30th, 2021. In details:
Firstly, to the trademarks which has been protected, UK will:
-Be recorded in UK registration system;
-The recorded trademark will have the same legal status as the trademark protected according to UK law;
-Keep the submitting of the application as EUTM;
-Keep the priority date according to the Madrid system or seniority date according to UK law;
-Be recognized as independently existing trademark according to UK law and may be challenged, assigned, licensed or renewed separately from the original international registration.
However, it is noted that: (i) the Comparable trademarks will be created at no cost to the holder of the international trademark, except a minimal administrative burden will be placed upon the rights holder (ii) the applicant will not receive the trademark certificate, however, they could be searched for the trademark at GOV.UK.
Secondly, for the EUTM which are still in examination phase:
In case EUTM are still in examination phase, on January 1st, 2021, the applicant has the following rights:
-Apply the trademark application in UK for EUTM during the transition, nine months from January 1st, 2021 until September 30th, 2021 as mentioned above;
-Keep the earlier filing date as EUTM;
-Enjoy other international priority claim effecting on EUTM in accordance with the seniority claim according to UK law.
However, it is noted that when applying the EUTM during the examination phase according to the UK trademark system then:
-The trademark applied in UK must be the same with the trademark in EU application which submitted previously;
-Goods/services required to protect of the trademark must be the same or included in the scale of EUTM.
In case the application submitted into UK does not satisfy the above criteria, the application would not enjoy the priority date or the priority claim of EUTM.
The application after having been submitted within that period and satisfies the criteria will be deemed as UK application and be examined according to UK law.
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