October 31st is almost here. Already known as the scariest night of the year, in 2019 the spooky date will be even scarier in UK—Brexit is finally here. Brexit will impact everybody living in the UK, as well as businesses trading with the UK and the European Union.
The latests reports show that just 26% of businesses are preparing for Brexit, while an additional 27% are not currently preparing but would in the future. This data reflects the uncertainty everyone is facing around Brexit.
In this post we want to put the focus on Brexit impact on trademarks, to clarify how these intellectual property (IP) rights will be affected in the event of a no-deal scenario.
Trademarks before Brexit
EU trademarks are intellectual property rights. They are granted by the EU Intellectual Property Office and are governed by EU regulations.
Currently, a business, organisation or individual that owns an EU trade mark has that right protected across all EU member states including the UK.
Business can also hold trademarks through the international Madrid and Hague systems. These systems allow users to file one application, in one language, and pay one set of fees to protect trademarks and registered designs in up to 113 territories, including the EU.
Brexit impact on Trademarks
If the UK officially leaves the EU at 11PM (BST) on 31 October 2019, there are two likely outcomes:
(1) Withdrawal agreement
Because this is still being negotiated, there are aspects about what a withdrawal agreement would entail that are still unknown by the general public.
A withdrawal agreement would come with a transition period (until 31 December 2020) in which the EU legislation would continue to apply to the UK.
All IP rights would continue to be protected and comparable UK rights would be granted during this transition period. Thus, Brexit impact on Trademarks would be trivial.
(2) No-deal Brexit
With a no-deal Brexit, on the other hand, the UK will take on “third country” status in the eyes of the EU. There would be no transition period in this case and the Brexit impact on trademarks would be significant. Changes for businesses would be required immediately as of 1 November 2019.
In any scenario, it is important to note that a European Union Trade Mark (EUTM) will continue to be valid in the remaining EU Member States and UK businesses will still be able to register an EU trademark, which will cover all remaining EU Member States.
If there’s no deal, the EUIPO (European Union Intellectual Property Office) has stated that EU trademarks will, in principle, no longer be protected in the UK, limiting the scope of protection to the territory of the remaining 27 EU Member States.
For this reason, to ensure that the intellectual property rights in all existing registered EU trademarks will continue to be protected and to be enforceable in the UK, the UK Intellectual Property Office (IPO) would create comparable UK trademarks, which will be recorded on the UK register.
These comparable UK rights would retain the filing dates recorded against the corresponding EU trademark and will also inherit any priority and/or seniority dates.
The trademark would then be treated as if it had been applied for and registered under UK law. This means that these trademarks:
- Will be subject to renewal in the UK
- Can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal
- Can be challenged, assigned, licensed or renewed, separately from the original EU trademark.
In addition, business with EU trademarks which are ongoing at the date of Brexit would be able to refile with the IPO under the same terms for a UK equivalent right, using the normal application process for registered trademarks in the UK.
So for a period of 9 months from Brexit, the government would recognise filing dates and claims for earlier priority and UK seniority recorded on the corresponding EU application. Trademark holders taking this step would need to cover the cost of refiling the application in accordance with the UK application fee structure.
It is also important to mention that UK businesses will continue to have access to the Madrid System when looking to protect their trademarks, with no Brexit implications.
The above information is just a brief overview of the Brexit impact on trademarks for UK businesses in a no-deal scenario. However, there is still not complete clarity around what will happen on the 31st of October. For further information, you can read the guidance notes the UK Government has published for business preparation in the case of no deal.
It’s also important to consult a legal advisor if your business legals will be affected by Brexit. Book a call with our legal team and we’ll guide you through every stage of your legal needs.