Brexit & Trademark Concerns

In a recent blog post, we discussed recent changes in the EU system.

Business woman protecting the idea.

On June 23, 2016, the United Kingdom voted to leave the European Union. The UK-EU divorce-nicknamed “Brexit”- will be negotiated over the next several years.

So, what does that mean? Basically, the UK will legally separate itself to be outside the EU, most likely by way of implementing an agreement to redefine its relationship with the EU bloc. As part of the global scenario, that agreement will include addressing and consideration of EU trademark issues.

Before Brexit, there were two parallel systems of trademark protection in the UK:

• The UK’s national system enabled brand owners to reach out directly to the national Intellectual Property Office (IPO) to have their mark(s) registered in the UK;

• If, however, brand owners wanted to have broader geographic protection across the EU (including the UK), they could apply to the European Union Intellectual Property Office (EUIPO) for registered protection. To be clear, the EU-approved trademark would include trademark protection in the UK.

So, what’s going to happen after Brexit? It is really difficult to say at this point, as it’s going to depend on how the UK positions itself globally during and after its exit from the EU. One safe bet is that the UK’s national trademark application system will most likely remain unchanged; however, the real question is how the EU trademark system will play out.

Consultation with colleagues in the UK and on the European Continent can provide some insight. The consensus is that the UK will legally remain in the EU for the coming years as it works on the terms of its exit. Lawyers in the UK, France, and Belgium agree that any current and foreseeable EU filings will have legal effect in the UK and that in the coming years, as the UK exits the EU, the UK will recognize the rights of those EU trademark registrations.

With that being the case, an EU filing still makes sense without the need to file in the UK at this time you will be covered in the UK with the single EU filing.

For brand owners who register their EU marks within the system in place now, down the line we believe there are two main options the UK will consider for then-existing trademark registrations:

1. The first is an automatic and seamless recognition of EU rights as UK registered rights, which means that the rights granted to EU registration owners convert over to be the equivalent of enforceable national UK protections;

2. The UK IPO will evaluate EU registrations and re-validate or re-register trademark applications. It may be possible that some registrations will not pass this UK evaluation–which the IPO may not have cleared had they been filed there in the first place anyway.

The key, regardless of how the EU registrations are treated, will be to be able to demonstrate their use in the UK.

At base, we believe brand owners will not lose the rights in the UK that they have based on their EU trademark registrations. We believe that the trademark considerations will transition smoothly and that seeking EU protections still makes sense for businesses operating across Europe. However, we are monitoring the developments closely, and we will be prepared for any and all actions that may need to be taken to ensure the continued protection of our clients’ trademarks.

Time will tell, and we will report and advise on all applicable considerations.