Trademark Protection Post-Brexit 

By: Dr. Iman Sjahputra, SH., Sp.N., LL.M


The agreement of United Kingdom leaving the European Union has been reached in the end of November 2018 in Brussels. The Prime Minister of United Kingdom, Theresa May, and 27 other European Union leaders did not take a long time to negotiate on such agreement. According to Voice of America (VOA) Report, the negotiation regarding the United Kingdom’s withdrawal from the European Union or mostly called as Brexit only took 40 minutes before they finally signed the 585-page agreement. The agreement reached by the European Union requires United Kingdom to remain in the European Union customs group and operate in the European market without being able to change or affect the regulations. This has to be conducted within the 21 months transition period after March 29, when United Kingdom officially exits the European Union.


One can only imagine how difficult it is for both parties in the process, United Kingdom and European Union, to execute such agreement. Especially for the United Kingdom. The agreement requires political decisions in parliament to be approved or rejected. While the state members of the European Union urged Britain to agree on such agreement, the Prime Minister of Netherlands, Mark Rutte, urged one of the members of the parliament to support the agreement, since European Union would not be able to provide a better agreement than that. According to Mark Rutte, the United Kingdom Prime Minister Theresa May has struggled to reach the agreement. However, the debate in the British parliament, estimated that the Prime Minister Theresa May will still continue talking to the European Union leaders. Regardless of the political feud in the United Kingdom Parliament, the withdrawal of this country from the European Union has various impacts if conducted without an agreement. Because, besides concerning the security issues, border crossings, manpower and etc., the agreement has implications in the business field. The businessmen will face troublesome legal issues such as the implementation of trademark law that applies in Europe.


How is it not troublesome? As can be known so far, the trademarks in Europe are managed by a body called the European Union Intellectual Property Office (EUIPO), in which 28 states are included. The existence of unification within the European Union eases the trademark registration for the European people. The Europeans can register once for countries he need his mark to be protected. For example, an Italian businessman who wants to register his perfume trademark “lovely”. He can register such trademark through the EUIPO office, located in Alicante, with various countries which are appointed by him, such as, Italy, France, United Kingdom, and Belgium. The advantages of this system are lower cost since no need to use the services of the agents in each country, only one agent is enough to take care of one trademark.


However, the withdrawal of United Kingdom from the European Union clearly affects the European Union trademark registration system. The question arises, how about the trademarks which have been registered to the EUIPO post-Brexit? Are these trademarks still be protected in the European Union? In connection with such example, with the leaving of United Kingdom from the European Union, the trademark protection which registered in the European Union is no longer valid for the registration in the United Kingdom. Meaning, the rights of the businessman of his trademark “lovely” in United Kingdom can no longer be protected. But the registration date and registration period of such trademark in the European Union is still considered to be the date of the trademark application in the United Kingdom territory.


Contrary to the trademarks which have not been registered and are still in the process of registration in the European Union, the perfume businessman is required to submit a registration application in United Kingdom within nine months before United Kingdom finally leaving the European Union. The application date in United Kingdom will be calculated from the date of the trademark application date in European Union. And if there is an opposition or response which is submitted against such trademark in United Kingdom, then it will be considered to be deleted. It is mandatory to submit for new application to the United Kingdom within the determined period of nine months.

This is the reality that is faced by the businessmen if United Kingdom officially left European Union.


The Author is an Intellectual Property Rights Attorney (IPR) domiciled at Jakarta.



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