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European Trade Mark Hub

Beyond Brexit: strategies for success in 2023 and beyond

Brexit

FAQs
Overview
Guidance
Insights
Experts

The period since the UK's departure from the EU in 2021 has had a major impact on both trade mark registration numbers and the trade mark protection landscape in general. Here, we examine the challenges currently facing trade mark owners and offer guidance on updating registration and protection strategies.

In 2021, the size of the UK trade mark register more than doubled – read our article on the filing facts and figures. This presents several new challenges, including added difficulties in selecting and clearing new branding, policing rights and challenging new entrants on the register.

Following Brexit, the UK register operates alongside but separately from the EU register. It is therefore important brand owners and their representatives understand differences in practice in protecting trade marks in the UK vs the EU which may affect filing strategies.

UKIPO representation changes

There are some changes to representation and, by 1 January 2024, it will be mandatory for all non-UK entities to have a UK-based representative recorded on the UKIPO for taking actions in relation to their UK trade mark registrations. Trade mark owners can avoid the last minute rush to appoint representation, manage their portfolios more effectively and also ensure they receive official UKIPO communications more promptly by appointing UK-based representatives now.

There is also a very recently announced change to practice in the UK which concerns representation for trade mark owners using the Madrid Protocol system to designate the UK – find out more on this here. Again, there are good reasons to appoint UK-based representation now.

Oppositions and disputes

While, in general, EU and UK IPO procedures are still similar, there are important differences, particularly in opposition proceedings, and this presents another challenge. Read about the key differences here. Choosing between forums, or coordinating oppositions on two fronts, is another area of complication that trade mark owners need to address – read our guidance on simultaneous oppositions.

As UK opposition proceedings are similar to litigation, they need to be well-managed by specialists – see our UK opposition guide. In contrast, EU trade mark oppositions are slightly more procedural, but still require expert management – see our guide to EU oppositions. As many oppositions end in a negotiated settlement, experience also counts – here we share some guidance notes on negotiation.

Portfolio management

Most trade mark owners now have multiple parallel UK and EU trade mark rights to manage. This usually requires a range of decisions to be made on an annual basis. These can become more manageable with the appropriate strategy and forward planning. We are happy to help with this; please contact us via beyondbrexit@marks-clerk.com if you would like further information. 

In addition to the guides below, we have created a collection of articles to provide further advice and support you need to keep your valuable rights safe and make your life easier.

Guide to trade mark oppositions at the EUIPO

Read the guide here

Guide to trade mark oppositions at the UKIPO

Read the guide here

Guide to UK trade marks & design practice

Read the guide here

Key contacts

Photo: Tom Farrand

Tom Farrand

Consultant Registered and Chartered Trade Mark Attorney (UK)
Tom is a Registered Trade Mark Attorney with more than 30 years’ experience working with brand and intellectual Property owners across a range of industries.
Photo: Esther Gottschalk

Esther Gottschalk

Office Managing Partner, Birmingham and Head of Trade Marks (Europe) Registered and Chartered Trade Mark Attorney (UK)
Esther is involved in all aspects of trade mark protection and portfolio management including trade mark selection, prosecution and enforcement. She works across a variety of sectors, and has particular experience within automotive, IT, insurance, food & drink and publishing.
Photo: John Ferdinand

John Ferdinand

Partner Registered and Chartered Trade Mark Attorney (UK)
John has over 15 years’ experience in the trade mark profession and works with a portfolio of national and international clients on developing a strategy for their trade mark protection.
Photo: Michael Shaw

Michael Shaw

Partner Registered and Chartered Trade Mark Attorney (UK)
Mike is experienced in all aspects of trade mark, copyright and design work, including the filing and prosecution of UK, overseas and international trade mark and registered design applications, and advising on availability and conflicts.

Amy Dunn

Senior Associate Registered and Chartered Trade Mark Attorney (UK)
Amy joined us in 2013 as a trainee Trade Mark Attorney and is involved in every aspect of the registration, protection, enforcement and management of UK, overseas and International trade marks across a wide variety of sectors.

Martin Gutwillinger

Senior Associate Conseil en Propriété Industrielle (Lux), EUIPO Professional Representative
Martin advises domestic and foreign clients on the development of their trade mark portfolios.
Photo: Erik Rõuk

Erik Rõuk

Associate EUIPO Professional Representative, Registered and Chartered Trade Mark Attorney (UK)
Erik is a Chartered Trade Mark Attorney and EUIPO Professional Representative involved in the registration, protection, enforcement and management of UK, EU and International Trade Marks.
Photo: Sarah Chittock

Sarah Chittock

Associate Registered and Chartered Trade Mark Attorney (UK)
Sarah joined Marks & Clerk in 2019 and qualified as a UK Trade Mark Attorney in 2022, achieving a distinction in both years of her qualifying exams.

Latest insights

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- 03 February 2023

Change to UKIPO practice where no UK representative has been appointed

As of January 2023, there has been an important, immediately implemented practice change by the UKIPO for rights where no UK or EEA based representative has been appointed – our recent article on this topic can be found here.
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- 02 February 2023

Key differences between the EU and UK TM opposition systems

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- 02 February 2023

How to coordinate action against identical EU and UK TM applications

Where it is necessary to run simultaneous oppositions, any action taken should be appropriate and targeted to the requirements of each jurisdiction.
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- 02 February 2023

Meeting the UK trade mark challenge

One of the many effects of the UK’s separation from the EU has been the massive increase in the size of the UK trade mark register. This crowded register is causing several significant challenges for trade mark owners and their UK representatives.
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Article
- 25 April 2022

Negotiation and settlement - UK & EU trade marks

Opposing a trade mark application can be a useful means of helping to prevent or limit use of the mark in question, avoid dilution of an earlier mark, and deter other third parties from adopting similar marks in future.
Read more

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