BREXIT

Will BoJo and Brexit have any effect on your trademark portfolio? If the British government can be taken at its word, there will be no effect, or hardly any. It has published a series of papers in which it describes the consequences of a no-deal Brexit (https://www.gov.uk/government/publications/trade-marks-and-designs-if-theres-no-brexit-deal/trade-marks-and-designs-if-theres-no-brexit-deal). Now that we are a step closer to this scenario, we would like to summarise their essential points for you.

1. An EU trademark currently applies in all 28 member states of the European Union, including the UK. When the UK ceases to be a member state, the EU trademark will only continue to apply in 27 member states in the event of a no deal.
2. For the registered EU trademarks, the British government has promised to provide a replacement national law with a minimum of paperwork required for EU trademark holders. In short, imagine you applied for and obtained an EU trademark on the day of Kate and William’s wedding, 29 April 2011. Your replacement UK trademark would be valid from the same filing date.
3. As for EU trademark applications that are not yet registered, the owner will have a period of 9 months following Brexit to reapply for the trademark in the UK. That means that national UK fees will have to be paid as extra, but you will keep the date of the EU trademark application or priority date as usual. For international brands indicating the EU, it works exactly the same way. However don’t bank on being able to claim back 1/28th of the EU fees.

So although there is a relatively high degree of certainty, even in the event of a no deal, there are still a lot of questions left dangling. Not least is the question surrounding evidence of use. If a trademark is not used for more than 5 years after registration, it is liable to be cancelled. A five-year EU trademark that is not used in the UK will therefore trigger a UK equivalent that is immediately liable for cancellation. A good solution would be for the British government to decide that use in the other 27 countries of the EU before Brexit constitutes valid use of these trademarks in the UK. In the knowledge that there are currently 1.5 million EU trademarks, the question is whether the UK wants to clog its national register with countless EU trademarks that are not used in the UK. So we will need to wait for more clarity from the British government.

If a last-minute agreement should be saved from the flames, the scenario will be similar. The EU27 produced a position paper in 2017 urging that comparable protection be offered for EU trademarks (and Community designs, by analogy) in the UK.

Oh, and by the way: despite many attempts to register it, ‘Brexit’ is not a registered EU trademark, so a UK equivalent will not be needed.