Brexit: Implications for trade mark protection

The implications of Brexit for trade mark protection are potentially profound. It had long been expected that the UK would leave the EU on 29 March 2019; however, as was agreed by the UK and the EU27 (i.e. the remaining 27 members of the EU) in early April, the exit date has now been extended to 31 October 2019.

The UK does have the option to leave the EU earlier, if the Withdrawal Agreement is ratified by both parties before 31 October 2019. Alternatively, the UK may seek another extension.

On the date the UK leaves the EU, the transition period will begin (during which time EU law will continue to apply in the UK). If the UK ratifies the Withdrawal Agreement, the transition period will end on 31 December 2020 – however this date may also be extended and so we cannot be certain exactly when the transition period will end.

After Brexit, trade marks which are registered in the EU will not have effect in the UK. The trade mark will need to be separately registered with the UK Intellectual Property Office (UKIPO) in order to benefit from protection under UK law.

What do we know so far?

At present, EU trade mark law heavily influences that in the UK. It is not anticipated that Brexit will cause any great shake up in this regard as the EU Trade Mark Directive was implemented directly into UK law on 14 January 2019 by the Trade Mark Regulations 2018.

However, one potentially major change is that UK lawyers may no longer be able to act for clients on EU trade mark matters. Instead, an EU member state lawyer will need to be instructed which will mean double the official and professional fees to be paid.

The draft Withdrawal Agreement provides that an EU registered trade mark (EUTM), which has been registered with the EU Intellectual Property Office (EUIPO) before the end of the transition period, shall receive comparable protection under UK law.

The UKIPO has clarified that a comparable UK trade mark right will retain the filing date recorded against its corresponding EUTM and will also inherit any relevant priority and/or seniority dates. It will become a fully independent UK trade mark which can be challenged, assigned, licensed or renewed, separately from the original EUTM.

It should be noted that if an EUTM, which has received comparable protection in the UK, were to be declared void or cancelled in the EU, the cloned mark may be treated the same in the UK, and so separately registering the trade mark with the UKIPO would provide greater certainty that a trade mark will benefit from protection under UK law.

Of course, the Withdrawal Agreement is not yet ratified and therefore has the potential to be altered, or simply to fall away, should full agreement fail to be reached. Uncertainty remains, therefore, and owners of trade marks should consider their options sooner rather than later to ensure adequate protection remains in place.

What action should trade mark owners take?

The only way to be certain of UK and EU protection for trade marks after Brexit is to ensure the trade mark is registered with both the UKIPO and the EUIPO. Now is a good time for trade mark owners to review their trade mark portfolio and ensure registrations and filings are up to date.

For advice on taking any of the steps outlined above or for more information about how Brexit will impact your IP rights, please contact a member of Stone King’s IP team.