Trademarks – the Brexit effect

Please note that the information herein is of a general nature and you should not act or refrain from acting on it without professional advice on the specific facts of your case. No liability is accepted by the author or Sykes Anderson Perry Limited in respect of this article. Taxation and law are complex subjects and the above is a basic outline only and is intended only as a general guide. Nothing herein constitutes financial advice.

As things currently stands, the UK will withdraw from the EU and cease being a member state on 19 March 2019. Once this happens, EU treaties will cease to apply to the UK.

This will undoubtedly impact a vast number of areas of the UK legal system and questions are being raised as to what these effects might be. One such area is that of EU-wide registered intellectual property rights.

European Union trade mark

A European Union trade mark (EUTM) is a trade mark which is pending registration or has been registered in the European Union as a whole. This is a unified trade mark system and one registration provides protection in all member states of the EU.

The problem?

Once the UK has left the EU, will an EUTM be enforceable in the UK?

If a new UK trade mark is created from an existing EUTM to cover the UK, then this could potentially be enforceable. How such a trademark is created out of an existing EUTM, the procedure for doing so and what fees (if any) will apply are all points which will need to be considered.

The UK may decide, or it may be agreed in negotiations, that the UK will honour EUTMs as if the UK remained a member state. This may be the simplest solution, but it does not seem particularly likely.

Another option, which is perhaps even less likely, is that the rules around EUTMs are amended to allow enforceability in non-EU member states.

On leaving the EU, UK Courts will lose jurisdiction over EUTMs. What happens to ongoing litigation when this happens is unknown.

Perhaps the best course of action to protect your trade mark is to file for a UK trade mark now to ensure protection in the UK.

The waiting game

Ultimately, at the moment nobody can say what effect of leaving the EU will be. Some preparatory steps could be taken now, such as applying for a UK trade mark, but whether any further action should be taken may not become clear for some time.

December 2017
Kevin Finlayson
Solicitor