16 February, 2018
Uncertainty surrounding the effects Brexit will have upon trademarks and intellectual property (IP) across the EU remains, with the next phase of talks focusing on the future of the trading relationship between the UK and EU. Already one UK based IP firm has announced they will open a new office in Dublin due to their concerns.
The EU Trademark Registration (EUTM) has previously allowed a single trademark registration to cover all of the 28 member states, without need for individual registrations in each country. However, the World Trademark Review has recently been advised that it is "very unlikely" the UK will be covered by this registration after Brexit is complete. Furthermore, the European Commission clarified that after the UK withdraws from the EU "rules on EU trademarks will no longer apply" to the UK.
Without an equivalent UK registration, an EUTM holder is likely to face great difficulty enforcing its mark against infringement in the UK, and the loss of these rights could also result in trademark owners being unable to use the ® symbol in the UK at all. Likewise, the converse could result in complications for UK-based trademark owners that currently utilise EUTM across the member states.
Considering that 30th March 2019 is only just over a year away, it would be most advisable for trademark owners to carry out an audit of the scope of their IP protection and identify how their IP may be affected by Brexit. This will enable owners to assess which rights they may see altered or taken away completely when trading in EU member states. Whilst it could be possible that the UK and EU will negotiate on registrations that will continue to recognise previous "overlaps" of countries - there is no guarantee this will happen, or indeed by the Brexit deadline. With no present clarity, it may well be that further registrations and applications for the jurisdictions you need should be made now, in order to prevent any issues further down the line.
If you have any questions about how Brexit may affect the trademarks or IP for your business, or would like assistance on any other commercial law matter; contact John Pickervance, Associate Solicitor within the Commercial department by email John Pickervance or phone 0333 207 1134. Alternatively, send any question through to Forbes Solicitors via our online Contact Form.