Amazon has launched a brand registration project in recent years. The prerequisite for brand registration is a registered trademark (R mark). Due to the regional characteristics of trademarks, only EU trademarks can be used to register brands on Amazon Europe. As we all know, EU trademark member states include the United Kingdom. According to relevant EU laws, as long as the trademark is registered in the “EU”, it can be effective and protected in all EU member states. In other words, as long as the EU trademark is registered, you can also do brand registration on Amazon UK.
However, the UK plans to officially leave the EU on March 29, 2019. From March 30, 2019, EU law will no longer apply to the UK, and the previously registered EU trademarks will no longer be valid in the UK.
Faced with the upcoming Brexit Day, how should companies that have registered EU trademarks deal with it? To clarify this issue, let’s first understand the difference between UK trademarks and EU trademarks.
UK trademark registration protects the rights of trademark owners in England, Wales, Scotland and Northern Ireland. If the trademark owner does not trade anywhere outside the UK, then registering a UK trademark can fully protect the rights of the trademark owner in the UK. EU trademarks protect the rights of trademark owners in the 27 member states of the European Union.
After Brexit, the UK will no longer recognize the effectiveness of EU trademarks in its territory. EU trademarks cannot be directly protected in the UK. Enterprises can still register trademarks in the UK by applying separately in the UK or designating the UK in international registrations. However, the cost-effectiveness of these two methods is far lower than EU trademark registration or international registration designating the EU. Therefore, for rights holders who want to register in multiple European countries including the UK, the cost and workload have increased a lot.
In addition, customs protection may be limited. At present, the rights holder of EU registered trademarks can obtain protection from the customs of all EU member states by applying for record protection at any customs of EU member states, but once Brexit occurs, the joint customs protection enjoyed by EU trademarks among member states will naturally disappear. If the rights holder wants to obtain customs protection in the UK, he can only apply to the UK customs separately. Moreover, whether the issues such as transit infringement that the EU has just amended and unified are also applicable in the UK depends on the corresponding legislation in the UK.
Regardless of the above situation, the top priority now is to register your own UK trademark! Don’t wait until the EU trademark really cannot be used in the UK before considering registering the UK trademark. This is extremely dangerous for cross-border sellers!
First of all, from the perspective of risk control. Wait until it is determined that the EU trademark and patent cannot be used in the UK before registering, then you will face the risk of the trademark being preempted by others!
Secondly, from the perspective of the trademark registration cycle. It is too late to register when it is determined that the EU trademark and patent cannot be used in the UK. Everyone knows that Amazon now needs the “R” mark to be recorded on Amazon! If you wait until it is determined that it cannot be used before registering, then you will have to wait another 6 to 8 months before you can record it on Amazon!
Finally, consider the government’s foreign-related trademark subsidy policy. This approach is also unwise, because for Shenzhen companies, the government has a subsidy of 5,000 to 10,000 yuan for registering foreign trademarks in the name of Shenzhen companies, and this policy is from December 2014 to the end of December 2019! And you need to obtain a foreign trademark authorization certificate before you can apply for subsidies! If you wait until you are sure that the EU trademark can no longer be used in the UK before you start registering, then by the time you apply for subsidies, it is very likely that the policy will have ended.
So once the UK leaves the EU, the issues involved are also very complicated, and it is likely that a series of documents will be formed through negotiations for transition. However, as a company, the most reliable method now is to pay attention to relevant information in a timely manner. Once the UK officially leaves the EU or issues corresponding documents, it is necessary to prepare relevant materials for re-registration in the UK to effectively protect its own rights and interests.