Brexit and your trade marks – how should you prepare?

Amid portents of food shortages, power cuts and even civil unrest, the one question that is gripping UK businesses and charities more than any other is: ‘what will happen to our EU Trade Mark rights?!’

Branding, IP & Trade Marks
Key themes

You will be pleased to learn that, for many, the short answer is ‘not a lot’. As with anything Brexit-related, the long answer is slightly more complicated. The key thing to know is that existing EU Trade Mark registrations will, at the end of the transitional period, split into two separate rights, one covering the UK, and the other what remains of the EU. These will pleasingly be known as ‘child’ and ‘parent’ rights respectively. No administrative steps will be needed to effect this division, and (happily, giving the potential economic downturn) no fees will be payable.

Do bear in mind that EU (and UK, and almost all other) trade marks are subject to ‘use it or lose it’. If you currently have an EU Trade Mark that is mainly or predominantly used in the UK, then bear in mind that the post-Brexit ‘parent’ registration could become vulnerable to third-party attack on the basis of non-use fairly quickly.

Bates Wells will update its own database of the hundreds of EU Trade Marks it currently looks after. But we also recommend that trade mark owners keep their own record of the position, as longer-term, inevitably, there will be an administrative and costs penalty: parent and child registration will need to be renewed separately at the end of every 10-year cycle, with official fees being paid to both UK and EU governments.

The position is more fraught for pending EU Trade Mark applications. Any case that is still pending when the split happens will no longer cover the UK. In such instances, EU applicants will have nine months to submit corresponding UK applications – obviously, at additional cost – which, if and when registered, will be backdated to the time of the parent EU application. Such ‘child’ applications will start from square one of the UK application process and there will inevitably some trade marks which, having been provisionally accepted for EU registration, will be rejected by the UK office.

The situation for those dealing with pending complaints (to use and trade mark registration of others’ brands) is even complex. It is impossible to summarise the workings of what amounts to a gargantuan (and, in the final analysis, pointless) unpicking exercise, except to say that each case will depend on its particular circumstances. If you have a good trade mark lawyer, they will already be thinking strategically about what Brexit will mean for your case (possibly whilst quietly sobbing into their copy of the relevant statute).

Lastly, and very quickly, the position regarding some other IP-related issues is as follows:

  • There are broadly-equivalent provisions for EU registered designs
  • Patents are largely unaffected – there is such thing as a European Patent but it is not a creature of EU law, and its geographical coverage is not contiguous with the EU.

The current position concerning ‘exhaustion of rights’ (the law around grey importation of goods, which relies on trade mark rights to block unauthorised sale of otherwise-legitimate products intended for other markets) is, as far as the writer can discern, a mess. Some very smart people will make a lot of money from this.

Bates Wells’ in-house chartered trade mark attorneys Mathew Healey and Catharina Waller will help you take back control.

This information is necessarily of a general nature and doesn’t constitute legal advice. This is not a substitute for formal legal advice, given in the context of full information under an engagement with Bates Wells.

All content on this page is correct as of February 13, 2019.