Brexit & Trade Marks

Of all the intellectual property rights, trade mark practice is likely to be the most impacted by Britain's leaving the EU. The UK's existing trade mark law is heavily entwined with EU law – in particular via the EU Trade Mark Directive. Domestic UK trade marks will be unaffected. EU Trade Marks (EUTMs) on the other hand are registered with the EU Intellectual Property Office. Many companies have relied upon EUTMs rather than national trade mark registrations for their trade mark protection in Europe. The consequences of the UK ceasing to be an EU Member State are therefore of great importance. Below, we address some of the key questions being asked by EUTM holders in the UK.

What will happen to my EUTM once the UK leaves the EU?

The Withdrawal Agreement has a section devoted to intellectual property rights.  Holders of EUTMs that have been registered before the end of the transition period will automatically be granted a comparable UK trade mark, for the same sign and covering the same goods and services.  The filing date of the comparable UK trade mark will be the same as that of the EUTM on which it is based.  Where applicable, the comparable UK trade mark will also enjoy the seniority of any relevant UK trade mark.

This does not address the situation where an EUTM has been applied for but not granted by the end of the transition period.  For new trade mark filings it may therefore be prudent, where the UK is of any significance as a territory as well as EU27 countries, to file for both UK national and EU trade mark protection, in particular, if the application is made towards the end of the transition period. Alternatively, there will be a period of 9 months following the end of the transition period in which it will be possible to file a UK trade mark application and claim the filing date of an identical EUTM application that was still pending at the end of the transition period.

Will my current trade mark attorney still be able to manage my portfolio post-Brexit?

Marks & Clerk has offices and trade mark attorneys in two of the EU27 countries, namely France and Luxembourg, which will ensure continuity of service.  Our clients will continue to be able to obtain brand protection advice from their existing trade mark attorneys.  For firms with attorneys based solely in the UK, the position is less clear, as the EU has indicated that, following the transition period, UK-based trade mark attorneys may lose representation rights before the EUIPO.  Ultimately, the regulatory position regarding professional representatives for EU trade marks will depend on the final trading terms agreed upon between the UK and the EU.

For on-going matters, the Withdrawal Agreement stipulates that those authorised to appear before the EUIPO and currently representing a client in a ‘procedure’ before the end of the transition period will be able to continue representing their client in that procedure.

If you have any questions regarding the impact of Brexit on your intellectual property rights, please contact your usual Marks & Clerk advisor or, alternatively, you can direct your question to the chair of our Brexit committee, Graham Burnett-Hall.

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