Brexit: will my EU trade mark continue to have UK protection?

The legal consequences of Brexit set in motion by the 23 June 2016 referendum impact on the ideal that all 28 European Union (EU) member states can register a common European Trademark with enforceable rights in all member states[1]. But with no agreement yet in place between the UK and EU, a ‘no-deal’ scenario is possible[2]. An extension of the 29 March 2019 deadline appears to have been agreed to by British parliament, but resolution still seems evasive[3].

What a no-deal scenario means for those who have EU trademarks is that EU trade marks will no longer extend to the UK[4]. We believe that the UK Government will ensure, however, that all rights contained in an EU trade mark will be transferred to a UK trade mark that will hold the same rights and enforceability[5]. New UK trade mark protection post-Brexit will be obtained via a UK trade mark application filed direct with the UK Intellectual Patent Office[6].

The fate of UK trade marks in the case of a no-deal has now been finalised[7][8]. Briefly, priority dates will be preserved in the UK trade mark[9] and the new UK trade mark will require an independent renewal, meaning additional fees to the EU registration[10]. Similar principles apply with regard to Community Design Registrations.

As the circumstances surrounding every trade mark are different, we recommend that EU trade mark owners seek our advice to ensure that EU protection and rights continue under the new independent UK system[11].

[1] “What will happen to the EU trademarks after the Brexit?”

[2] Lee, “Brexit Update.”

[3] Barnes, “Brexit.”

[4] Lee, “Brexit Update.”

[5] Ibid.

[6] Ibid.

[7] Farrand, “Brexit – Further Trade Mark Guidance from the UK Government.”

[8] Ibid.

[9] Ibid.

[10] Ibid.

[11] Lee, “Brexit Update.”

 

References:

Barnes, Peter. “Brexit: What Could Happen Next?” BBC, March 14, 2019, sec. UK Politics. https://www.bbc.com/news/uk-politics-46393399.

Farrand, Tom. “Brexit – Further Trade Mark Guidance from the UK Government.” Lexology, March 5, 2019. https://www.lexology.com/library/detail.aspx?g=4c2f012b-5d0d-4dc1-adb4-0b17516d550c.

Lee, Dennis. “Brexit Update: Trade Marks and Design Rights.” Lexology, February 11, 2019. https://www.lexology.com/library/detail.aspx?g=25e2ea52-7a2c-4738-854e-6dd8f99d2b88.

“What will happen to the EU trademarks after the Brexit?” Trademark.eu (blog), July 15, 2016. https://trademark.eu/will-happen-eu-trademarks-brexit/.