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.
If you are
looking for an experienced IP services in Vietnam to help
you with your IP application, you should visit ANTLawyers.vn. Our attorneys
have experience with the IP process and will work closely with you as you apply
for your IP. We routinely match inventors with experienced IP attorneys for a
free consultation on our platform and offer a money back guarantee.
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