Brexit – Implications for those with EU Trade Marks

14 October 2016

Dmck

One of the many potential consequences of Brexit is the impact it could have on trade mark protection in the UK.

 

If you have relied on the EU trade mark (EUTM) regime to protect your interests in the UK instead of opting for national trade mark registrations, then post Brexit you could find yourself without any enforceable rights in the UK.

 

Now that we know when Article 50 is likely to be triggered, it would be prudent to undertake an early review of your existing trademark portfolio. If you have EUTMs and are using them only in the UK, then those EUTMs could be susceptible to attack for “non-use in the EU” following Brexit. If this could be an issue for your business, it would be useful to identify it at the earliest possible opportunity so that viable options for addressing the risk can be considered and more easily implemented.

 

If you are relying just on EUTMs, then the two primary options for you are as follows:

 

  • If you don’t ever intend to use your EUTMs otherwise than in the UK, then you should consider re-registering them in the UK.

 

  • If you do intend to use your EUTMs in another Member State, you should take steps to do so as soon as possible and in advance of actual Brexit. The longer the period of use you have in another Member State prior to Brexit, the stronger your position will be in defending a third party claim based on “non-use in the EU”. 

If you are using the trade marks of third parties under licence arrangements (for example, under franchise or distribution agreements) then you should probably be starting a conversation with those third parties as well. If they re-register then it’s unlikely that the wording of your existing licence arrangements will automatically include the right for you to use any re-registered marks. Alternatively, if they haven’t considered the need to re-register pre Brexit, then your ability to use the licenced marks post Brexit could be in jeopardy.

For more information on any of the matters detailed above or for general advice on or assistance with the implications of Brexit on your intellectual property rights, please contact Dawn McKnight [email protected]. Dawn is a Partner at Carson McDowell and is head of the firm’s Commercial Practice.  

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