What Brex­it will mean for trade marks in the UK

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 in the EU.

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 issue 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.