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  • Asia
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Offices
  • Canada
    • Ottawa
    • Toronto
  • China
    • Beijing
    • Hong Kong
  • France
    • Paris
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  • Luxembourg
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  • UK
    • Aberdeen
    • Birmingham
    • Cambridge
    • Edinburgh
    • Glasgow
    • London
    • Manchester
    • Oxford
Client liaison
  • Japan
  • Korea
Expertise
Services
  • Patents
  • Brands & Trade Marks
  • Designs
  • Litigation & Dispute Resolution
  • Commercial IP & Contracts
  • Due Diligence
  • Freedom to Operate
  • EPO Patent Oppositions
  • European Patent Validations
  • Anti-counterfeiting
  • Open Source & Third Party Code
Sectors
  • Energy & Environment
  • Life Sciences
  • Agritech
  • Medical Technologies
  • Chemistry
  • Transport
  • Entertainment & Creative Industries
  • Food & Drink
  • Fashion & Retail
  • Universities & Research Bodies
  • Start-ups & Spin-outs
  • Digital Transformation
    • 3D Printing
    • Artificial Intelligence
    • Blockchain
    • Data & Connectivity
    • Extended Reality
    • Industry 4.0
About Us
  • Working with us
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  • Diversity & Inclusion
  • Careers
Insights
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  • Beyond Brexit - UK & EU trade marks
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  • All publications

Beyond Brexit

Overcoming new UK and EU trade mark challenges

Brexit

FAQs
Overview
Insights
Guidance
Experts

Strategies for success in 2022 and beyond

The UK's first year outside of 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 increased significantly – 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. While the procedures are 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.

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 have a team of experts on hand to provide the advice and support you need to keep your valuable rights safe and make your life easier.

Latest insights

Photo: an EU flag flying next to a Union flag
Insight
- 25 April 2022

Key differences between the EU and UK TM opposition systems

Brand owners and their advisers now need to treat the EU and UK separately when protecting and enforcing trade marks, so more dual, identical EU and UK trade mark applications are being filed than before.
Read more
Photo: a group of people in business wear making notes
Insight
- 25 April 2022

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.
Read more
Photo: Union Flag flying against blue sky
Insight
- 25 April 2022

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.
Read more
Photo: meeting discussion with laptop on table
Insight
- 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

Guide to trade mark oppositions at the EUIPO

Download EUIPO Guide [PDF]

Guide to trade mark oppositions at the UKIPO

Download UKIPO guide [PDF]

Key contacts

Tom Farrand

Head of Trade Marks 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.

John Ferdinand

Partner Registered and Chartered Trade Mark Attorney (UK)
John has over 10 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: Esther Gottschalk

Esther Gottschalk

Partner Registered and Chartered Trade Mark Attorney (UK)
Esther advises on all of the trade mark aspects relating to branding and is an expert in securing trade mark rights. Working across numerous industries, she provides clear, strategic advice on how her clients can utilise their IP to achieve their business goals.
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.

Eugénie Desmet

Associate EUIPO Professional Representative; Conseil en Propriété Industrielle (Luxembourg)
Eugénie is a qualified Luxembourg Trade Mark Attorney and EUIPO Professional Representative based in our Luxembourg office.

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.

Brexit insights

Image: UK and EU flags
Insight
- 16 April 2021

Brexit FAQs

Brexit & trade marks, designs, and the end of the transition period
Read more
Insight
- 27 October 2020

Address for service at the UKIPO

New rules for UK rights holders effective from 1st January 2021
Read more
Insight
- 27 January 2021

Pan-European Design Protection: Considerations for Automotive Manufacturers Post-Brexit

Automotive manufacturers used to enjoy protection in both the UK and the EU27 under Registered and Unregistered Community Designs (RCDs and UCDs).
Read more

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