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Brexit is here, what to do?

As of 1 January 2021, the transition period ended and the UK is no longer part of the European Union.We will briefly list what happens with existing or new trademark registrations and design registrations.

What happened?

Since February 1, 2020, the UK has withdrawn from the European Union and has since become a “third country”. A transition period applied until the end of 2020, during which EU law in its entirety still applied in the UK. From 2021 onwards, Brexit will have consequences for trademark and design holders of European registrations.

What happened since this January?

What happens with existing registrations or applications from this January depends on the status of the trademark or design registration:

I have an existing EU trademark or design registration.

Good news; it is automatically converted into a national right in the UK. For the other countries within the EU nothing will change and the current registration will remain valid. Please note that in most cases a UK address is required for registration.

My trademark or design registration expires in 2021.

This registration can simply be extended. In principle, this can be done indefinitely for brands, for industrial designs up to a maximum protection period of 25 years. The renewal will only be valid in the EU, unless you choose to renew the registration in the UK as well. This will then become a national registration valid in the UK.

I have applied for a trademark or design, but it has not yet been granted.

 If a trademark or design registration is still in the registration process, it will, once granted, be valid within the European Union, but not in the UK. However, it is possible to obtain a comparable right in the UK. The individual new application must then be submitted in the UK by September 30, 2021.

In the coming months, as a trademark or design holder, or applicant, you will therefore have to make a choice whether you want to apply for or continue protection in the UK.

It is important to make the right choice in time, so that you can ensure that the registration is maintained.

If you have any questions about registrations or applications after Brexit, please contact Helen Maatjes (helen@thelegalgroup.nl)

 

Brexit – an important summer update for trademarks and designs

Brexit – a summer update for all EU trademark and Community design holders

For many companies the upcoming (or actually already happened) Brexit has been overshadowed by the corona-crisis that has gripped the whole world. However, many companies need to take action at this moment to be in time before all Brexit measures come into effect.

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No infringement “The Crossbox” on CrossFit brand

No infringement “The Crossbox” on CrossFit brand

In the proceedings between the Dutch association Vereniging Exclusieve Sportcentra (VES) and Crossfit Inc. the Court in The Hague ruled that the Crossfit brand has little distinctive character and that the use of the “The Crossbox” brand does not infringe these trademark rights.

First of all, the Court rules that CrossFit cannot invoke the protection of a “well-known brand”. Well-known brands benefit from a wider protection than ‘normal’ or unknown brands. The trademark CrossFit therefore only has a standard scope of protection. The question then is whether the brand “The CrossBox” would create a likelihood of confusion with the CrossFit brand. The court finds that as the element ‘cross’ is derived from cross-training and ‘fit’ refers to fitness, the brand has only a modest distinctive character. The scope of protection in this case is therefore limited.

The court further rules that the only similar element is ‘cross’, while the more distinctive part ‘Box’ only occurs at The CrossBox, so that there is little similarity between the brands. The element ‘box’ also has an distinctive character because the word ‘the’ is used in the trademark. All in all, the court rules that there is no risk of confusion between The CrossBox and the CrossFit brand.

A nice victory for the Dutch VES against the big American party CrossFit. This means that all gyms affiliated with VES are free to continue offering their The CrossBox classes!

 

Trademark registrations in bad faith – what to do?

International distribution

Many companies are trading internationally and cooperate with several national distributors for the distribution of their products. Needless to say, it is important to have all agreements with distributors recorded in writing. A well formulated distribution agreement will not only prevent discussions about for example financial agreements and delivery of products, but can also prevent discussions about trademark registrations, if such agreement includes agreements regarding the use of intellectual property rights, like trademarks.

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