The historic vote in the UK to leave the EU will have
far-reaching consequences, but the UK will remain a full member of
the EU while an exit package (a "Brexit") is negotiated.
That process, which is provided for by Article 50 of the Treaty on
European Union, is expected to take at least two years, and could
be much longer.
The implications for trade mark owners will become
clearer as the exit negotiations proceed over the next few years,
and we explore below some of the practical considerations for Trade
The EUIPO (formerly known as OHIM) is an EU institution.
Therefore, the eventual departure of the UK from the EU is likely
to mean that EU Trade Mark (EUTM, formerly CTM) Applications and
Community Design Applications filed after Brexit
will no longer cover the UK. However, it is expected that the UK
will enact transitional provisions to provide continued protection
in the UK for any EUTMs or Community Designs that are in existence
as of the date of actual exit, ensuring that existing rights will
continue to be recognised and perpetuated. Exact details of those
arrangements are of course a long way off.
In the short term, particularly in view of the uncertainty
regarding the timescales of any potential law changes, there is no
need for any dramatic change in strategy for the protection of
trade marks and designs in the EU and UK. International brand
owners may wish as a precaution to consider filing additional UK
national applications for key trade marks and designs of particular
strategic importance, particularly given current favourable
exchange rates. However such action should not be necessary to
maintain ongoing trade mark or design rights in the UK where an
EUTM or Registered Community Design is already in place.
On the other hand, whilst the transitional provisions are likely
to recognise seniority claims made from lapsed UK TM Registrations,
brand owners may wish to consider revising their renewal strategy
with respect to seniority claims. Right-holders who already own
parallel UK and EU Registrations for the same trade mark, where the
EU TM claims seniority from the UK Registration, would be well
advised to continue to renew both parallel Registrations for the
From the date of actual departure from the EU, it will be
necessary to seek protection in the UK for trade marks and designs
separately from the EU.
Abel & Imray are of course always on hand to advise on how
best to protect marks and designs throughout Europe, both during
the exit negotiations and in the post-Brexit world.
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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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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