Should you be checking the “GB” box in addition to the “EM” box when filing Madrid applications?

When you are filing a Madrid Protocol application, it is possible to check the “GB” box in addition to checking the “EM” box.  With Brexit in progress, should you be checking both boxes?  A March 14 tentative agreement (link) between EU and UK makes it perhaps less urgent to check both boxes in the near term, as I will discuss.

If and when Brexit reaches its conclusion (with the UK having officially departed from EU), then of course many Madrid filers will choose to check both boxes, so as to pursue trademark protection in both places.

But what about a Madrid Protocol application filed in the near term, at a time when Brexit has been announced but before Brexit reaches its conclusion?  Does it make sense to check both boxes now?

By way of background, until now, the filer of a Madrid Protocol application could check the “EM” box and this would lead to possible trademark protection in the EU.  This would, of course, extend to the UK by virtue of UK’s membership in EU.  But then Brexit was announced (blog article here).  At some future point, if the Brexit transition were to reach its conclusion, checking the “EM” box would no longer lead to trademark protection in the UK.

Meaning that some Madrid Protocol filers might, in the near term, choose to check both the “EM” box and the “GB” box when filing a new Madrid Protocol application.  Other Madrid system users might choose to file a Subsequent Designation designating “GB”.

But just because you can check the “GB” box in addition to the “EM” box, should you actually do so?  The answer is “maybe not right away”.

The reason for this is that barring some surprise, the UK will take steps so that community trademarks that were registered prior to Brexit will remain in force in the UK even after Brexit.  You can see this here.

So for example if you were to check both the “EM” box and the “GB” box on a newly filed Madrid Protocol application at the present time, you would be paying designation fees for both check boxes.  The Madrid Protocol application would go through the examination and/or registration process in both Offices, potentially leading to granted protection in both places.  Then, assuming that indeed the Brexit reaches its conclusion, and assuming that the present plan (that CTMs in effect on that day will remain in effect in the UK) has its effect, you would end up with duplicate protection in the UK.

I expect that the UK will further provide that in the event of such duplicate protection, only one of the protections would actually be legally effective.

I suppose a filer might choose a “belt and suspenders” approach by checking both boxes.  After all, what if some unexpected hitch were to arise in the examination registration process in one Office and not the other?  Or what if some unexpected hitch were to arise in the announced transition process by which pre-Brexit CTMs will remain in force in the UK after Brexit?  In either event the filer might be glad that it had checked both boxes.

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