Brexit – what happens now to trade mark rights?
The UK has voted to leave the European Union, and we are therefore looking at what Brexit means for trade mark owners.
What will happen now?
It’s business as usual for now, and nothing has changed overnight in terms of ownership, as it can take two years for leaving negotiations to take place under the Lisbon Treaty. This can only happen once the Prime Minister has triggered Article 50 into action. Despite Cameron’s assertions during the campaign that this would happen immediately, he has since stated that this decision will be for the new Prime Minister to make. Therefore, major change should not occur until 2018, and in the meantime, we carry on with the applications and oppositions which are ongoing.
What will happen to my EUTM after Brexit?
It is likely that once the UK has formally left the EU, there will be a procedure whereby EUTMs may be split into two parts, one part covering the UK and one covering the rest of the EU. It is unlikely that this will be an automatic process, and the situation should be closely monitored to ensure no loss of rights in the intervening period, by competitor encroachment. Fees will doubtless be payable.
It is also likely that the UK part of the EUTM which is split off will retain the date of the original EUTM, ensuring that your rights cover this period.
Do I need to file another application in the UK, if I already have an EUTM?
This is a question which is difficult to advise on, as no one actually knows the answer, and all that can be given is the best assessment in uncertain circumstances.
As stated above, there should be some mechanism put in place by the time Brexit actually happens, which will ensure continuity of rights which have been secured under the EUTM system. However, no one actually knows whether this will be the case, or how it will work.
Given this uncertainty, trade mark owners may wish to consider filing new trade mark applications in the UK now. If we reach 2018 and the process by which conversion of EUTMs to UKTMs is inaccessible, unacceptable, or just too expensive, any applications made at that point will only be protected from that filing date, meaning interim loss of rights.
Trade mark owners may therefore decide to file UK applications now as a precaution.
Each approach will be fact dependent. However, the last couple of days have shown us that nothing is certain and predictable, and in our view the relatively small investment of securing UK protection at this point is one which is worthwhile.
What about trade mark coexistence agreements which cover the EU?
It’s complicated, and each case will need to be assessed on its own merits, but these are likely to no longer have effect from the date that the UK leaves the EU. When negotiating such Europe-wide agreements, trade mark owners should also be mindful of the implications of whether further countries will leave the EU.
Do you have any recommended action points?
- Seek advice from a registered trade mark attorney as to how you can shape your strategy;
- Review your trade mark portfolio and any agreements you have in place;
- If you currently have an EUTM, consider re-filing now in the UK;
- If you are considering filing a EUTM at a future point, file in both the UK and EUTM territories.