Brexit Trade Mark Changes Update

State of Play So Far

  • 23 June 2016 referendum held in the United Kingdom (UK) to decide whether to leave the European Union (EU) was held – 52% majority to depart.
  • 29 March 2017, Article 50 of the Treaty of the EU was invoked and started the ball in motion.
  • 29 March 2019 due date for UK to leave.

Current Trade Mark Laws

For many years a cost-effective way to secure trade mark protection across all Member States of the EU has been to file a European Trade Mark (EUTM) application.

Not only is the cost of filing a EUTM much less than filing separate National trade mark applications in 28 countries, use in any one Member State is deemed sufficient to support the entire EUTM. This means traders did not need to show use throughout all Member States to benefit from a Register right throughout the EU.

Under current timetables, following 29 March 2019 the UK will no longer be part of the EU and will not benefit from rights as an EU Member State.

Effect on Validity of Current EUTM Registrations

Once the UK is no longer an EU Member State there will be certain immediate impacts on EUTM registrations:

  • Registered rights in an EUTM will no longer cover the UK.
  • Use in the UK will no longer be enough to support an EUTM registration.
  • Seniority claims in EUTMs based on UK registrations will no longer have effect.
  • Reference to the EU as a legal jurisdiction will no longer extend to include the UK.

What Could Happen

Laws to manage what will happen to UK rights previously encompassed by EU laws are still being drafted, so there is still much uncertainty around the EUTM. Recent reporting envisages three possible options for current EUTM rights:

  • EUTM registrations could automatically be translated to corresponding UK registration rights; or
  • Having an EUTM registration could create an option for the applicant to seek UK registration using the EUTM as a priority base. UK registration will issue after examination of the UK application under the UK trade mark laws; or
  • EUTM registration rights in the UK could simply cease to have effect in the UK, with no provision to translate those rights to a UK registration.

What Should You Do Now?

Identify your true market.

You should first identify where your market is situated. You should ask yourself if your business is truly European in its spread, or focussed on the UK.

If you are focussed on the wider European market, you must consider whether your current use is enough to support an EUTM. For example, can you show use of your trade mark in EU Member States outside of the UK which will continue to support your EUTM?

Keep your UK and EU trade marks in force.

If you have EUTM or UK trade mark registrations due for renewal in the next year or so, and assuming the trade mark and the coverage is current, we recommend you do not let these listings lapse.

While there are indications that there will be an opportunity to create UK register rights out of EUTM registrations, nothing has been released regarding process, cost or effect. Until it is clear what will happen, we recommend you keep your current registrations to ensure you retain valuable priority claims.

Update any out of date Register rights.

If your current trade mark coverage is out of date because the trade mark is “old” or the goods and services are not current, think about filing now in the UK and EU to give you a “belts and braces” approach in advance of new laws being enacted.

Do not forget about third party agreements.

Many legal documents such as co-existence or settlement agreements will refer to the EU where the actual market interest may include or be factually limited to the UK. Separate provisions for the UK may not have been included. After 29 March 2019, there is no automatic extension into the UK of obligations and restraints that are effective in the EU.

Any EU agreements should be reviewed to see whether clarification is required to ensure the UK is covered.

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