Update on Brexit Implications on Trademarks

The withdrawal of the United Kingdom from the European Union, i.e. Brexit, is about 8 months from now, and the EU has begun issuing notifications of the implications on various sectors of the economy, including trademarks.[i]  The EU permits entities to obtain trademarks locally from specific countries, like Germany or France, or obtaining EU trademarks, which are valid in all EU member countries.  Absent an interim agreement between the UK and the EU covering trademarks, the EU has warned that all EU trademarks rights will cease in the UK on March 30, 2019.[ii]  This includes both trademarks filed with the European Union Intellectual Property Office (EUIPO) and international applications filed through the Madrid Agreement/Protocol that designate the EU. However, as on April 26, 2018 the UK has not begun implementing policies to cover EU trademark holders.[iii] For example, there are no identified policies covering entities wishing to file a UK trademark application and relying on EU trademark rights, such as priority or converting an EU trademark to a UK national trademark. 

The UK issued the White Paper, proposals for the Brexit negotiations, on July 13, 2018.[iv] The response from the EU has been lackluster, at best, causing many to conclude that the UK withdrawal in 2019 will likely lack an interim agreement, the so-called “worst case scenario”.[v] Further, members of the UK government have resigned over the last month in response to concerns in Brexit, including foreign secretary Boris Johnson and Brexit chief negotiator David Davis.[vi]  Thus, between dysfunction in the UK government and concerns the views of EU and UK, post-Brexit, are too divergent, the possibility of a UK withdrawal from the EU without an interim agreement appears increasingly likely.

In light of the prudent advice “hope for the best, plan for the worst”, those whom possess EU trademarks, and undertake business in the UK, should begin to plan on a business landscape requiring a UK national trademark and an EU trademark.  Given the lack of UK policies for addressing EU trademark owners, specifically with respect to ensuring an EU trademark owner can seamlessly obtain a UK national trademark, it is prudent to begin filing for UK national trademarks.  This will avoid being caught the inevitable backlog of trademark filings with the UK Intellectual Property Office, and will hopefully allow EU trademark owners to prevent subsequent adopters of a mark from undercutting the EU trademark system and creating uncertainty over ownership of a UK national trademark.

[i] https://ec.europa.eu/info/brexit/brexit-preparedness/preparedness-notices_en, last accessed July 20, 2018.

[ii] Notice to Stakeholders: Withdrawal of the United Kingdom and EU Rules for Trademarks and Community Designs Pursuant to Regulation (EU) 2017/1001 on the European Union Trade Mark and Regulation (EC) No 6/2002 on Community Designs, Jan 22, 2018; https://ec.europa.eu/info/brexit/brexit-preparedness/preparedness-notices_en, last accessed July 20, 2018.

[iii] https://www.gov.uk/government/news/ip-and-brexit-the-facts, last accessed July 20, 2018.

[iv] https://www.telegraph.co.uk/politics/2018/07/20/front-bench-brexit-becoming-high-stakes-game-chicken-britain/, last accessed July 20, 2018; https://www.express.co.uk/news/politics/987836/Brexit-White-Paper-download-PDF-how-to-july-2018-Theresa-May-full, last accessed July 20, 2018.

[v] https://www.telegraph.co.uk/politics/2018/07/20/front-bench-brexit-becoming-high-stakes-game-chicken-britain/, last accessed July 20, 2018.

[vi] https://www.nytimes.com/2018/07/09/world/europe/david-davis-brexit-resign.html, last accessed July 20, 2018; http://nymag.com/daily/intelligencer/2018/07/top-uk-brexit-officials-resign-in-blow-to-theresa-may.html, last accessed July 20, 2018.

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