The UK is due to leave the European Union on 29 March 2019. If the UK is a key market for you, it is important that you think about the following points. We will be happy to answer any specific queries you may have.

The following points will help ensure you are not caught out by Brexit implications resulting in potential loss of UK rights, duplication of costs for cloned UK rights and EUTMs, territorial uncertainties in agreements and potential UK bases for oppositions falling away. It is also a good opportunity for you to review your EUTM and UK protection and ensure that it is fit for purpose.

  1. EUTM renewals due after 29 March 2019 (and within six months thereafter) - Renew before 29 March 2019 to ensure no duplicate renewal fees for cloned UK right, as well as EUTM registration.
  2. Pending EUTM applications - Focus on completing the registration process before 29 March 2019. This will avoid additional costs associated with refiling in the UK.
  3. Nine month deadline - Record 28 December 2019 deadline against any pending EUTM applications (as at 29 March 2019) to prompt re-filing for separate UK right. We shall issue reminders for any pending EUTM applications for which we are the representative at the EUIPO.
  4. Co-existence, licences, agreements, undertakings – Review Territory definitions to ensure UK remains if that was the intention.
  5. EUTM oppositions - Where a national UK right is the sole or most important basis for opposition. Try and settle before 29 March 2019 because the opposition could fall away.
  6. UK oppositions - Where a EUTM is used as a basis for opposition. If the EUTM registration is vulnerable for non-use cancellation and there is only use in the UK, there could be issues if the opposition is not resolved before 29 March 2019. Try and settle/conclude any oppositions, if possible.
  7. File EUTM and UK applications now – A UK registration can be secured in 3-4 months (i.e. before 29 March 2019) to ensure valid UK rights subsist on the day after Brexit. We can offer a discounted tariff for an EUTM/UK application 'package'.
  8. UK/EU Portfolio review/consolidation – Now may be a good time to review EUTM protection as against potential new UK filings to ensure appropriate and adequate protection.
  9. Madrid Protocol applications – If based on an EU Registration, consider subsequently designating the UK separately to ensure a valid UK right exists (it is currently not clear how WIPO will ensure UK protection is maintained where EUTMs are designated).
  10. Rest assured that Marks & Clerk LLP will be able to provide ongoing advice in relation to all EU Trade Mark matters through our network of EU offices.

Further information can be found here.

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.