Brexit 101: Trademarks

August 30, 2018

Considering the inevitable costs of setting up and running a business and the time constraints of those involved, many small and medium businesses as well as startups understandably sometimes drag their heels when it comes to Intellectual Property (IP) law and deciding to register a trademark to protect their brand.

You can read here why we believe trademark registration is generally so invaluable. Unlike things like filing company accounts, trademark registration is not mandatory and so often gets left to the backburner. Does this really matter and should there be an urgency to filing a trademark sooner rather than later?

If you are ultimately looking to get trademark protection in not just the UK but in the whole of the EU, the answer is yes!

The Brexit effect

The reason for this is Brexit. While EU trademarks currently protect UK businesses (given that the UK is still, of course, part of the European Union), the UK and the European Commission have agreed in principle that this will no longer be the case with EU trademarks filed after the end of the Brexit transitional period (i.e. after 31 December 2020). If this deadline is missed by an applicant who wants to have trademark protection in the EU plus the UK, two separate applications would have to be submitted to the respective trademark offices.

Register your trademark sooner rather than later

Having to file in both separate territories not only creates an additional administrative burden but also incurs far greater fees. EU marks applied for before the relevant deadline, on the other hand, will most likely continue to be protected in the UK by a UK “comparable” right (the precise technicalities of which are still in discussions), saving time and money all round.

Even if you are not looking for trademark protection in the whole of the EU, since trademarks operate on a first-come-first-served basis, the ideal time to secure protection is in the pre-launch stage of any new product or service. The process from application to registration typically takes between 4 to 6 months (for UK and EU marks respectively) and the mark does not have to be in use at the point of application, provided you have a genuine intention to use the mark in the course of trade. One small caveat here is if you are applying for a mark that is not distinctive (which is one of the fundamental conditions for registration), then you would need to show that the mark has become distinctive through use.

Why it’s good to register trademarks early

Filing early gives the best chance of success in opposing any later applications for identical or similar marks since you can rely on your registered/pending rights only from the date of filing your mark. Applying as soon as possible also means that registered trademark protection can be underway or even in place by the time the offering goes to market.

Crucially, it also helps to avoid the unintentional adoption of a mark used by another party for identical/similar goods or services. This is because the trademark search (which any prudent trademark applicant/specialist conducts as part of the trademark application process) helps to reveal pre-existing conflicting marks. There is also a 2/3-month opposition period during the application process where the trademark is published online and prior rights holders have the opportunity to object to the new application before it registers.

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The overall benefits and next move

These measures and precautions (the conflict search and opposition period) help to give trademark applicants much-needed reassurance and peace of mind that they are in the clear to use their desired mark. Better to find out upfront that a mark is taken than after having spent a fortune on marketing and advertising, all of which is ultimately wasted if a rebrand is necessary! Nobody wants to find themselves caught up in a trademark dispute if they can help it either.

For further legal advice, you can contact the author of this article IP expert LawBrief, Laura Symons. To buy the right Trademark product for your business please enter an enquiry or call us today on 020 7148 1066 to speak to a member of our friendly Client Care Team. LawBite can deal with all aspects of intellectual property law and provides fixed-price no-obligation quotes too.

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