What are the implications of Brexit for businesses trying to protecting their IP with trademarks?

March 14, 2017

In our last Brexit blog, we considered in general how Brexit may affect contracts that have been signed. On 23 June 2016, the UK voted to leave the EU.

In this blog, we consider the implications are for businesses who have registered trademarks to protect their trade names and logos.

Many businesses have registered trademarks to protect their trade names and logos. Currently, to register a trademark in the UK and EU the following process is followed:

  1. Businesses can choose to register trademark in the UK only
  1. Businesses can choose to obtain an EU trademark (EUTM). This gives businesses the right to protect their trademark in the UK and EU.

 

If the UK is to leave the EU, then we need to consider the impact that this will have on current registered trademarks and how to register trademarks in the future. It is likely that businesses who have obtained an EUTM may not also have obtained a UK trademark.

The Government has not yet announced how trademarks will be dealt with post-Brexit.

 

Issues that could arise include:

  • Businesses wanting to register trademarks will need to have separate registrations in the UK and the EU and may no longer be able to register a EUTM.
  • Businesses with a EUTM may not be able to enforce the EUTM in the UK meaning that they have no registered trademark protection in the UK.
  • Businesses may need to pay two sets of trademark fees if they are no longer able to apply for an EUTM– one set of fees for UK registrations and one for EU registrations. There may also be two sets of fees for lawyers/trademark agents for the UK and EU lawyers. This will increase the costs for registering trademarks
  • Current EU trademarks may no longer be valid. The trademarks may need to be reapplied for separately in the EU and the UK. Businesses could lose their trademark priority as a result.
  • Businesses may have to convert their trademarks from EUTM to UK trademarks. There will be cost implications for businesses in this process.
  • Businesses that may have decided to apply for EUTM trademarks may decide to apply for UK trademarks instead due to the uncertainty of what will happen with EUTM.
  • UK trademark attorneys may no longer be able to deal with applications for trademarks in the EU and/or prosecute for breach of trademarks in the EU. This means businesses may need different representatives in the EU.

 

The status of EUTM and the trademark process for UK businesses are currently uncertain post-Brexit. For further information on how to protect your intellectual property please contact LawBite.

Annelie Carver – LawBite LawBrief. For further legal advice, you can contact Annelie via our online legal advice portal or call us today for FREE LEGAL CONSULTATION on 0207 148 1066.

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