The effects of Brexit on trade mark protection in the UK

As many of you know, the “standard procedure” for protecting one’s trade mark in the European Union has for a long time now been to register a EUTM (European Trade mark) that covers all 28 member states in the EU.

However, what happens when those 28 become 27?

Brexit has (understandably) caused quite a stir in regards to trade mark protection in Europe as a whole. Previously, the most common question in regards to which countries that are covered by an EU trade mark has been what happens to an existing trade mark when a country becomes a member state of the EU, not the other way around.

As with all things Brexit, the effect on EU trade mark holders’ future trade mark protection in the United Kingdom is uncertain.

In December of last year, the European Commission and EUIPO (the European Union Intellectual Property Office responsible for managing the EU trade marks and registered Community designs) found it appropriate to prepare a notice for the scenario in which no agreement is reached between the UK and the EU.

The notice is in itself nothing more than a reminder to holders of – and applicants for – EU trade marks and community designs that as of the 30th of March 2019, the “EU rules on EU trade marks and Community designs will no longer apply to the United Kingdom”.

In practice, this means that if Brexit goes along as intended (from a UK point of view), with a withdrawal from the European Union, previously registered (or pending) EU trade marks does not enjoy legal protection in the UK after the 30th of March 2019.

The potential impact on EU trade mark holders is obvious. In addition, it also affects national trade marks (such as a nationally registered trade mark in for example Sweden or Japan) that have been designated through WIPO and the Madrid system to the European Union. Such trade marks would thus no longer have effect in the United Kingdom after a withdrawal from the Union.

All of this is of course dependent on the terms of a withdrawal agreement between the European Union and the United Kingdom, which – as stated previously – is very uncertain.

However, the notice encourages all trade mark holders to “prepare” for a withdrawal.

At this stage, our firm recommendations are:

1. If you are considering a new EU trade mark application, and want exclusivity for your brand in the UK, also file a national trade mark application separately for the UK.
2. We will of course help you with any trade mark related actions you might want to take. Just contact us and we will do our very best to keep your brands protected, even after Brexit.

The notice from the EU Commission and EUIPO in its entirety is found here.