Preparing for ‘Brexit’: Ensuring your Important Trade Marks are Protected in the UK and the EU

What will happen to the UK protection afforded by EUTMs post-Brexit is likely to remain unclear for some time, and potentially until the UK has fully negotiated its departure from the EU. We appreciate that in the meantime our clients require guidance over the long-term scope of protection and enforceability of their EU trade mark rights. We have therefore outlined some information and suggestions below for protecting your trade marks in the UK and EU during this transitional period.

Potential risks and changes to EUTMs post-Brexit

1. If an EUTM has not been used in the EU, or has been used exclusively or predominantly in one member state (such as the UK), it may be vulnerable to revocation. Post-Brexit, UK based use might not count as use in the EU, which could further jeopardise the validity of a EUTM.

2. Various options for ensuring that EUTMs remain protected in the UK are being discussed by the relevant authorities. We expect that a one of a number of potential legal mechanisms could be employed to protect EUTMs in the UK, including:

A. The EUTM is registered in the UK automatically.

B. The EUTM is registered in the UK upon payment of a fee.

C. The EUTM is re-examined in the UK, creating a national UK application.

In respect of scenarios A and B, the risk is that the resulting UK registration may still be vulnerable to revocation for non-use if you did not previously use the EUTM in the UK.

In respect of scenario C, the risk is that the application could be refused registration or opposed, and registration is not guaranteed. Your UK rights in the mark would be unenforceable until the application is registered, and we would expect a mass re-examination of EUTM’s in the UK to cause delays and backlogs at the UKIPO. You may also infringe the UK rights of third parties if you start to use the mark in the UK.

Preparing for Brexit

To prepare for Brexit, you may wish to take pre-emptive action to avoid the above uncertainties and potential risks, and particularly if you are concerned that your EUTM or any resulting UK registration is or would be vulnerable to revocation for non-use.

1. Contact your usual attorney or advisor at Swindell & Pearson to discuss your IP portfolio and any concerns you may have surrounding your IP and Brexit.
2. Consider filing parallel applications in the UK and EU for new trade marks.
3. Keep existing parallel UK and EUTMs (i.e. for the same mark) in force.
4. Consider filing a new UK application to protect the EUTM separately in the UK now, or await details of a potential EUTM to UKTM conversion procedure.
5. If you are filing a new international application, base it on a UKTM rather than a EUTM, and designate the EU. If you own an international registration designating the EU, consider adding the UK as a separate national designation.
6. Review where in the EU you have been using the EUTM and keep a record of your use.
7. If all or most of your EUTM use has taken place in the UK (or other EU state), please contact your usual attorney or advisor to consider registering the EUTM in the UK (or other EU state).

Swindell & Pearson is a UK based intellectual property firm that has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton upon Trent. To find out how Swindell & Pearson can help you and your business with any patent, trade mark or design right matters please get in touch via [email protected] or by telephone on 01332 367 051.