Due to BREXIT’s imminent effects on intellectual property, we would like to inform you that as of 1^st January 2021, not all the registered EU trademarks and Community designs will automatically enjoy protection in the UK. In particular, there will be a distinction between trademarks already registered before the end of the Brexit transition period (i.e. 31.12.2020) and trademarks still in application status on that date.

The former will automatically convert into a separate EU and UK trademark, starting from 1^st January 2021. The resulting UK trademark will have the same application date, priority and registration as the EU trademark from which it was generated.

On the other hand, ongoing applications will not benefit of this provision, but there will be a period of 9 months to submit a specific application in the UK to obtain the same protection, even if the data of the filing of the suspended EU application. An additional measure we recommend to all EU trade mark owners is to update the proprietary data of their file as needed, so that the UK trade mark creation is already done with the correct data. Any coexistence agreements and licensing rights concerning EU trade marks will continue to affect registrations in the UK. If they have been registered with the EUIPO, they have also been registered with the UKIPO. The same criterion applies to EU designations of international trademarks and the same applies to Community designs. It will therefore be important to monitor the progress of pending applications until 31.12.2020 to assess the appropriate actions to be taken to ensure the proper management of intellectual property assets in the United Kingdom. For any information needed as regards this matter, please contact us and we will be happy to assist you.

With the recent conversion of the “Cura Italia” decree into law, the validity of industrial property rights expiring during the current emergency period has been extended in Italy.

In the Official Gazette no. 110 of 29 April 2020 (S.O.n.16) it has been published  the conversion law (L.24 April 2020, n.27) of the decree law of 17 March 2020 n. 18 (“Cura Italia” decree), containing “Measures to strengthen the National Health Service and economic support for families, workers and businesses connected to the epidemiological emergency by COVID-19. Extension”.

In light of this change, the Italian Patent and Trademark Office, as far as our Country is concerned, has notified  that:

“All certificates, permits, concessions, obligations and enablings, however denominated, including those relating to industrial property titles, expiring between 31 January 2020 and 31 July 2020, retain their validity for the following ninety days after the declaration of cessation of the state of emergency. For industrial property titles, upon expiry of the period, the interested party who intends to extend the duration of a title, should take any proper action with the related payments, in the forms already established by the law, in order to achieve their maintenance or renewal ” .

The Italian Patent and Trademark Office will timely give information on the cessation of the state of emergency.

Our firm continues to be at complete disposal for all the necessary information and operations of the case.

On June 23, 2016, British people voted to leave the European Union (EU), the so-called “Brexit.”

What will happen now? This is the question!

For the time being, the European IP Rights landscape remains the same. No changes are likely to happen in the immediate future.

The UK Government has not decided which strategies will be adopted and the timing of the mechanism is also not yet known.

According to the Treaty of Lisbon, the UK is expected to be a member of the EU until mid-2018 at the earliest. At the moment, and until the actual leaving date is reached, all EU IP rights will apply equally to the all other EU member states.

A process of negotiation and adjustment of the system will start with multiple possibilities, including the United Kingdom to completely leave the European Union or to stay in the European Economic Area (“the Norwegian way”). Due to the many possible scenarios, it is important not to rush and be attentive to the next events.

Therefore do not make hasty decisions. Each holder of IP Rights will have different needs.

There is no one-size response that fits-all IP holders.

The law is changing but we will be able to keep you up to date with suggestions for your personal needs.

Should you have any further questions, please contact us.