Brexit & Trade Marks …. one month on

01 August 2016

This is the first of a series of bite-size briefing notes regarding the potential implications of the UK leaving the EU (“Brexit”) on UK, EUTM and International (WIPO) trade marks.
As a preliminary point, we do not foresee a situation where proprietors of existing EUTM applications or registrations will be stripped of their rights in the UK.
This initial update will focus on the preservation/extension of existing rights post-Brexit.   
UK National Registrations
Brexit should have no impact on the validity or scope of UK national registrations or applications, because these rights are limited to the UK.
European Union Trade Marks (EUTMs)
Most commentators in the IP profession, including ourselves, believe that provisions will be put in place to enable the extension of existing EUTMs to the UK when the UK formally leaves the EU (currently not expected to occur until 2019 at the earliest).
It is not yet known whether this will be an automatic step or will require the trade mark owners to make a specific request, or whether extension will incur a fee.
International Registrations  
For International (WIPO) Registrations designating the UK, there should be no adverse consequences of Brexit.
For International Registrations designating both the UK and EUTM, once again, the change should not affect the UK designation.
International Registrations designating the EUTM (but not the UK) will no longer cover the UK.  It is already possible to extend the geographical coverage of an International Registration by requesting a subsequent designation, and as such it is already possible to extend coverage to the UK.  It is not yet known whether there will be the same mechanism to facilitate the extension of rights for existing EUTMs (discussed above) for International Registrations, but we expect there will be a similar provision.
Should Trade Mark Owners file separate UK applications?
It may be of benefit to file now a new UK application, rather than waiting to extend existing EUTM rights, and some of the factors to consider are:
Broader protection 
If a pending EUTM application or International Registration designating EUTM is challenged,  for example by opposition based on a single national registration protected in an EU Member State (not the UK), this could result in the claim of goods or services of the challenged EUTM application being restricted, and thus infringement rights would be narrowed.  This would have effect throughout the EU and would apply to any post-Brexit UK extension.
If, however, a UK application was filed, that application would not be affected by that same non-UK national registration (unless exceptional reasons existed), which means that broader rights could be obtained in the UK.
Extending the non-use vulnerability of registrations  

A benefit of a new UK registration is that it will not become vulnerable to revocation on the ground of non-use until 5 years from its registration date, whereas an existing EUTM registration that is extended to the UK will, we believe, maintain the EUTM’s earlier registration date and as such will become vulnerable to a non-use attack at an earlier date.
There is, of course, some time before the UK formally leaves the EU, and we expect a degree of fluidity in negotiations relating to trade mark protection.  As can be seen, it seems that there may be some benefits in applying separately for protection in the UK now, rather than waiting for the post-Brexit position.

Our next update will focus on the issue of non-use/genuine use of EUTMs post-Brexit and measures to avoid/minimise vulnerability to such revocation.

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