Although the politics around Brexit is very uncertain, in fact the UK Government has been clear about what will happen to existing EU trade mark (EUTM) registrations should the UK leave the EU.
The basic principle is that existing EUTM holders should not be disadvantaged by Brexit, and so separate rights will be created in the UK which exactly mirror all existing EU registrations, and no official fee will be charged for this. This will happen either, as soon as reasonably practical after 29th March 2019 (or later if the deadline for exit is extended), or at the end of the transitional period, if an Agreement with the EU is reached.
On this basis, we are not at this time advising clients that it is imperative to file UK applications to replace existing EU coverage in the UK. There are, however, a number of caveats to this advice, as follows:
- There is not a lot of practical detail around how these separate UK rights will be achieved, how long the conversion will take, and whether the “cloned” UK registrations will be given separate numbers. Given that millions of EUTMS will need to be added to the UK Register, and given that many more EUTMs are filed each year than UK TMs, there may be a long period when the state of the register in the UK is in flux, possibly for many months, particularly if the UK “crashes” out of the EU on 29th March 2019, without agreement. We assume there are plans in place which will enable parties to take action through the Courts and the UK IPO against marks in the UK based on prior EU registrations during this period, but no details around this have been provided. For this reason, therefore, there is an argument that proprietors should consider refiling at least their most important marks in the UK to preserve their position.
- The above only applies to registered trade marks and not pending applications. In relation to EU TMs still pending at the time of Brexit, or the end of the transitional period, we understand that a nine month window will be available for parties to clone an EU application into an EU and separate UK application. The implication is that a fee for this will be charged, although we have no information as to what that fee will be.
- The position with regard to International marks designating the EU is a little different. The official advice from the Government that it needs to work with WIPO to resolve the issue of EU designations and whether they will apply to the UK after Brexit. Given the uncertainty on this point, it would be prudent for proprietors of international registrations designating the EU, who retain an interest in the UK, to consider filing separate UK applications as well, pending more certainty on this issue and in order to ensure rights in the UK are maintained.
If you would like any further advice regarding the implications of Brexit on your existing trade mark portfolio (whether with a view to maintaining your UK or EU trade mark protection), please do not hesitate to contact us.