Brexit – what happens next to EU trade marks?

February 1, 2018

Obviously, we cannot predict the future but can give you an idea about the various solution models which have been proposed


and are in the process of being debated.
 
Which solution model is eventually adopted is likely to depend on whether the UK and the EU achieve a bilateral agreement or not, which is likely to depend on whether there is a “soft” or “hard” Brexit.
 
The EU Commission’s proposal is simply to extend the rights conferred under EU law to the owner of an EU trade mark to the UK territory.
 
In practice, this would mean that whoever currently has a valid EU trade mark will have comparable rights within the UK territory after withdrawal.  However, this solution model is dependent on the UK being able to negotiate a bilateral agreement with the EU.
 
If a bilateral agreement cannot be negotiated (e.g. ‘hard Brexit’) EU trade marks will lose their validity in the UK from the date of withdrawal unless the UK parliament changes UK law unilaterally.
 
If we do end up with a “hard Brexit”, the two most straightforward solutions suggested by the Chartered Institute of Trade Mark Attorneys (CITMA) are as follows:
 
enter all current EU trade mark registrations into the UK register to create a UK trade mark valid for the UK territory (the so-called Montenegro model) or 
provide all EU trade mark holders with an opportunity to opt into the UK register within a certain period after the UK’s withdrawal, on completion of a form and payment of a fee to the UK trade mark office (the so-called Tuvalu model).  EU trade mark owners are unlikely to opt in to do this unless they actually use or intend to use their EU mark in the UK, so this solution model has the advantage that the UK register is not cluttered with trade marks that have and will never be used in the UK. 
 
Summary
 
It is very likely that there will be a transitional period to allow EU trade mark owners to extend their trade marks rights to the UK. Whether this will require the payment of a further fee or not is not clear at this stage.
 
If no agreement can be reached with the EU and the UK does not enact relevant legislation in time, EU trade mark owners who do not have an equivalent UK trade mark will have to apply for a trade mark in the UK to secure protection within the UK after the date of withdrawal.
 
Pending applications before the EU are likely to be transferred to the UK IPO until a cut off date. Whether the applicant will have to pay a fee for this or not is not clear.
 
After this cut off date, applications have to be made to the EU IPO and UK IPO to extend the protection of the trade mark to the territory previously protected by one registration in the EU IPO register.
 
If you would like to talk to us about issues raised in this article or other issues which you may be concerned about in connection with your IP and Brexit or you are interested in applying for a trade mark in the EU or UK please contact Joanna Stephenson, Partner,  or call the office on +44 20 3701 7395.
 
Articles are for general guidance only and discuss the legal position in the UK at the time of publication unless stated otherwise. You must take legal advice and not rely on the information provided in our articles before taking action. We do not update our articles and therefore, past articles may not reflect the current legal position. Where we refer to Court decisions facts are stated as reported by the Court.