UPDATE: Brexit – what happens next to EU trade marks?

August 8, 2018

The latest on EU trade marks after Brexit


We now know that the UK government’s intention is to create equivalent ‘cloned’ rights that will allow for existing EU trade marks to be added to the UK trade mark register with the same filing and priority dates, without further examination and free of charge to rights holders.
 
While this is good news it comes with a note of caution.
 
In a clarifying statement to the Chartered Institute of Trade Mark Attorneys (CITMA) the UK IPO pointed out that this is still subject to the UK and the EU ratifying the Withdrawal Agreement. If there is a ‘no deal’ scenario, this solution may not materialise.
 
On pending applications, it is currently envisaged that applicants who have applications for EU trade marks in progress at the EUIPO before the end of the transition period (currently 31 December 2020) will be able to apply with the same priority or filing date at the UK IPO for an equivalent trade mark within nine months from the end of the transition period.
 
This is good news for IP lawyers, who will have to correspond with examiners and respond to oppositions at UK level once again after having already managed the application process at EU level. For any business wishing to extent the protection of their EU trade marks to the UK after 31 Dec 2020 this is bad news as they are the ones who have to pay these lawyers.
 
CITMA has written to EU Commission pointing out the increased costs, uncertainty and complexity of the proposed solution to businesses and in particular small and medium sized businesses who have limited resources. The answer was simply that the matter is at this stage not open for further negotiations. However, until the Withdrawal Agreement is ratified nothing is set (or shall we say written) in stone.
 
If you would like to talk to us about issues raised in this article or applying for a trade mark in the EU or UK please contact Joanna Stephenson, Partner, Joanna.stephenson@jwssllp.com 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.