UK: What Brexit will mean for trade marks in the UK

Last Updated: 13 September 2018
Article by Eric Ziehlke

The reports of political turmoil in the United Kingdom regarding the implementation of Brexit has caused some consternation to those parties holding registered trade mark and other intellectual property rights in the EU. However, it is important that a proper perspective be maintained with respect to any perceived danger to such intellectual property rights.

The European Union (Withdrawal) Act received Royal Assent on 26 June 2018 and is now law. The Withdrawal Act is intended to ensure that the UK exits the EU with certainty, continuity and control. It is clearly not in the interests of the UK or the EU that there be some sort of "cliff edge" in relation to intellectual property rights when the UK withdraws from the EU.
As far as trade marks are concerned, while the UK remains a full member of the EU, the EU trade marks will continue to be valid in the UK. When the UK leaves the EU, in any scenario, an EU trade mark will continue to be valid in the remaining EU member states. At that time, UK businesses, like businesses in other countries, will be able to register new EU trade marks covering the remaining member states.

One of the main issues in this matter will be the position of trade mark protection in the UK of EU trade mark rights registered before the Withdrawal is implemented. This position has not yet been finalised. However, whether or not the UK and the EU negotiate a smooth transition of trade mark rights, it is clearly the objective of the UK government to minimise disruption for business and to provide a smooth transition of such rights.

In assessing its options, it appears that the UK government would seek to "mirror" the trade mark rights of EU registered marks after Withdrawal so that these rights are duplicated on the UK trade marks register which is administered by the UK Intellectual Property Office. It is important to emphasise that the UK could enact this duplication of rights on the UK register without reference to the EU as the UK has the sovereign power to do so. Hopefully, such a system will be enacted on a co-operative basis between the EU and the UK without the need for unilateral action by the UK. This situation may be somewhat more complex for unregistered EU trade mark rights or EU trade marks subject to opposition. In addition, the issue also arises as to the likely treatment by the UKIPO of evidence of prior use of EU trade marks after Withdrawal, where that prior use took place outside the UK.

For trade mark owners outside the EU who own registered EU trade marks, it appears very likely that after Withdrawal they will maintain separate trade mark registration in the UK and also in the EU which would comprise the remaining member states. Nonetheless, prior to the Withdrawal, some trade mark owners may choose to file future trade mark applications both in the UK and the EU to eliminate any uncertainty. There may be some justification in such a strategy, especially if the trade mark owner wishes to separate the licensing or franchising of its trade marks between the UK and the EU markets.

On the face of the likely scenarios, there seems to be no pressing need for owners of registered EU trade marks to take the added precaution of now filing fresh applications for their EU trade marks in the UK prior to the Withdrawal. However, it may be that some trade mark owners will choose to do so for their key marks, in the interests of abundant caution.

It is important to remember that after the Withdrawal, the UK will remain a member of the Madrid Protocol as will the EU. As a consequence, the process of separately registering trade marks in the UK and the EU under the Madrid Protocol will continue to be as simple as it is today.

For further information please contact:

Eric Ziehlke, Partner
PHONE: +61 2 9233 5544
EMAIL: EJZ@SWAAB.COM.AU

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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