After the victory for the "Leave" side in the UK
referendum, we wanted to provide a further update to our Canadian
trademark clients about brand protection in the UK and Europe going
In our June 22, 2016 bulletin we explained that if the UK
exited the EU, the UK would cease to be part of the European
Trademark system and European Trademark registrations (EUTMs) would
no longer grant protection in the UK. This outcome now appears
inevitable. It could have a significant impact on Canadian
businesses, many of which protect their brands in Europe using the
pan-European EUTM. However, there will be no immediate loss of
rights, as the UK is expected to take approximately two years to
negotiate its exit.
In our prior bulletin we also noted that there would likely be
transitional provisions enabling current owners of EUTMs to obtain
UK national trademark registrations. Today, leading UK IP firms are
maintaining that view. It is expected that the UK will enact
transitional provisions that enable EUTM owners to re-register
their marks in the UK without a loss of priority. There is
precedent for this in other situations where a country has
withdrawn from a regional trademark system. Therefore, while some
businesses may wish to apply to register their trademarks in the UK
now out of an abundance of caution, most UK experts are suggesting
that it would also be reasonable to wait for a decision on
transitional provisions which may provide better priority in the UK
than would new filings.
Over the longer term, another issue will be maintenance of
EUTMs. We expect that use of a mark in the UK only will not be
sufficient to maintain an EUTM. Unless a mark which is the subject
of an EUTM is used in an EU Member State, its registration will
likely become vulnerable to cancellation. Companies doing business
in the UK only should, therefore, register their marks in the UK if
they have not already done so.
The above changes are likely to result in an increase in
trademark applications filed with the UK IP Office, which could
result in processing delays for applicants.
Cassels Brock & Blackwell LLP will continue to keep you
informed of developments in this area.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
This chapter of Doing Business in Canada provides an overview of Canada's intellectual property regime in five key areas: copyright, industrial designs, patents, trademarks and the enforcement of IP rights.
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