Brexit British Trademarks at risk of being dumped by the EU

Posted on 29th March 2019 by Samantha in Ecommerce, Website
8 minutes read
Back To Blog
Brexit_British_Trademarks_at_risk_of_being_dumped_by_the_EU
Share this article:

At this moment in time, it is not clear how the UK will leave the European Union nor when this might happen. Ongoing political confusion is causing major problems for the business community. In addition, the European Union will enforce some actions may have grave consequences for UK businesses. The two subjects we will look at today are .eu domain names and how British trademarks/design protection will fair after the UK leaves the EU.

.eu domain name extensions

When you bear in mind the size of the European Union, the growing amount of trade deals across the world and the number of websites operating within this area, .eu domain names are certainly a great asset to have. As and when the UK finally leaves the European Union is uncertain. The Brexit date, no longer the highly anticipated March 29, now delayed by two weeks to April 12 may be extended to 22 May or some other date. However, the EU has already given notice to how it will treat trademarks. In simple terms, .eu domain names registered in GB/GI will be deemed illegal (as they are outside of the EU) and a withdrawal process will begin.

There are two specific scenarios which are:-

1. 12 April 2019 – UK leaves the EU with no deal

The bullet point issues regarding this scenario include:-

  • A ban on registering .eu domain names where the registrant country code is either GB/GI from 13 April 2019.
  • The owners of .eu websites held by those in GB/GI prior to 22 April 2019 will receive notification confirming their domain does not comply with EU regulations. A two-month window of opportunity will come into effect during which to demonstrate compliance.
  • The domain name withdrawal process begins.

While there will be some restrictions on what can be done with .eu domain names in this scenario, you can still change:-

  • Contact details
  • Name server details
  • Delete the domain
  • Transfer to a qualifying owner

Some of the restrictions during this consultation period include:-

  • Ban on transferring to a GB/GI registrant
  • Ban on extending the terms of the domain name
  • Automatic renewals will be cancelled
  • You will no longer be able to reactivate domains already in quarantine

If the individual/company is unable to prove eligibility for ownership of a .eu domain name then they will receive a notice of withdrawal. This effectively takes all functionality away from the domain name and renders it useless. After a period of 12 months the domain name will be revoked by the European Union. Then, slowly these domains will be resold to eligible parties.

2. Structured exit from the European Union

If all goes to plan then the UK will leave the European Union with a trade deal on  the 31st December 2020 or at a later date agreed by both parties. Unless there are specific provisions made within the trade agreement, the European Union will still look to reclaim domain names held by registrants with a GB/GI country registrant code.

The process is as follows:-

  • On 1 January 2021 (or the first day after an extended EU transitional period ends) those looking to register .eu domain names with a GB/GI country code will be barred.
  • The owners of .eu domain names already registered prior to the date of leaving, with GB/GI registrant country codes, will receive an email notification confirming non-compliance with the regulations.
  • Website owners will be given until 2 March 2021 to demonstrate valid ownership credentials.
  • Domain name withdrawal process begins.

During the period between 1 January 2021 and 2 March 2021 as mentioned above, website owners will be allowed to amend:-

  • Contact details
  • Name server details
  • Incorporate a new contact
  • Transfer domain name to a qualifying owner
  • Delete the domain name

The following actions will be restricted:-

  • Transfer to another GB/GI owner
  • Extending the registration period of the domain name
  • Automatic renewals
  • Reactivating websites previously held in quarantine

On 2 March 2021, those owners unable to confirm their eligibility to hold a .eu domain name will receive a formal withdrawal notice. This will render the domain name useless by taking away all functionality. After 12 months the domain name will be revoked and reintroduced onto the market for qualifying investors to purchase.

On the surface, it looks as though many UK companies who spent significant amounts of money and time on their .eu websites may lose out. However, there is a solution!

Proxy service

Here we have an array of offices around the world with particularly strong exposure across the European Union. As a consequence, in the event of Brexit going ahead we will be offering a proxy service to our customers who currently hold .eu domain names which they would prefer to retain going forward.

The process is simple; we register the domain names in our company name using a European Union registration address. This ensures that we abide by all EU regulations regarding .eu domains. We will then enter into an agreement with the customer. This will allow them to use the domain name for a fee. Due to the EU registration details we can complete the transfer from your own name or company name almost instantly. The reality is that your website visitors will see no difference and there won’t be any downtime.

European trademark/design protection

The subject of European trademarks often goes hand-in-hand with websites and online businesses. They offer the ability to protect your business name or various aspects of your operations against fraud, misuse and misappropriation. However, after Brexit, what will happen to UK companies who have registered their trademarks through the European Union?

UK government planning

So far the UK government has received significant criticism on the way it is handling Brexit. Not to mention the subject of European trademarks and protection within the UK after Brexit does not fall into this category. Plans have been underway for more than two years and surprisingly the process is fairly simple and offers the same level of protection currently enjoyed pre-Brexit.

Current situation

At the moment EU trademarks and registered community designs are classified as intellectual property rights. The EU Intellectual Property Office grants these rights. They offer protection to businesses, organisations and individuals who own EU trademarks or registered community designs. These trademarks/designs are protected right across the EU which includes 28 nations (27 once the UK leaves).

There is also the option to utilise the Madrid and Hague trademark/design systems. This requires just one application in one a chosen language to secure protection across 113 territories which include the EU. At this moment in time there are 1.7 million EU trademarks/community designs. Plus an additional 200,000 international trademarks/design registrations incorporating the European Union. In reality the trademark/design protection authorities across the world are often intertwined with reciprocal arrangements. This ensures a greater degree of protection on a global basis.

Post-Brexit situation

As you might have guessed, any trademarks/designs registered through the EU will become null and void for UK protection in the event of a no deal Brexit or at the end of the transition period. So what protection is the UK government offering?

All trademark/design owners who have active protection via the EU trademark and community design body on the date the UK exits the EU can apply to an equivalent UK counterpart. This will offer a degree of protection currently on a par with the EU body. It is worth noting that when the UK does leave the European Union, all trademarks/designs registered with the EU remains protected across the EU. It is just the equivalent protection across the UK which will cease.

If you have various trademarks/designs registered for protection by the EU body you will have a nine-month period after the UK exits the EU during which to the file equivalent UK protections. During this period, the original filing dates and reference points on the EU application will be replicated on the UK register. This ensures that any court action in the UK will recognise the original application date.

This is an issue which seems to be in hand. There are various services available which will walk you through the process. They should allow you to lodge your trademark/design protection. It is important that you appreciate the withdrawal of protection for GB trademarks and designs post Brexit. Just remember that you will need a separate UK trademark going forward.

Summary

Things are unraveling slowly but surely. We now have a clearer understanding on complicated subjects such as ownership of .eu domain names and protection of EU registered trademarks/designs. As and when the UK leaves the EU those with a GB/GI country registration code will not be eligible to own .eu domains. As it relates to domain names already registered, a withdrawal and revoke process will begin the day after the UK leaves the European Union.

The matter of trademark/design protection is a lot more straightforward. There is still protection for those registered with the EU regulatory bodies even after the UK leaves. However, this protection will only cover members of the European Union. So, as the UK would be leaving you will need to apply for UK trademark/design protection after the date. As we touched on above, while the UK government general handling of Brexit is in question, the trademark/design protection process should in theory be seamless. Should you need more information about our proxy service, don’t hesitate to contact us.