12 February 2019

How will Brexit affect my trade marks?

As with all things Brexit, nothing is currently set in stone and many of you will zone out at the mere mention of the “B” word, but some recent guidance from the Chartered Institute of Trade Mark Attorneys (CITMA) highlights the need to think about your trade mark protection in the EU now.

As CITMA makes clear – see the link below -, there is good news and bad news. Let’s look at the good news first.

Existing rights

When we officially exit the EU, those with EU trade marks (either applied for through the EUIPO or WIPO) will, under current plans, automatically be granted an equivalent UK trade mark (without cost) to ensure you still have the protection you originally applied for.

If the UK is not a market of interest to you, there is the option of opting out of this.

Pending applications

Here’s where things take a negative turn. According to this latest guidance, if, when we exit the EU, you have an EU trade mark application pending (whether made through the EUIPO or WIPO), this will continue to process as normal but will no longer cover the UK (unless your WIPO application was based on a UK registration). You will therefore need to re-file a new UK application (if you require trade mark protection here and do not already have a UK mark) and pay the relevant fees for this.

Making EU trade mark applications

Currently anyone “having their domicile or their principal place of business or a real and effective industrial or commercial establishment” in the EU can file an EU trade mark application through the EUIPO. Current guidance implies that, post-Brexit, those established in the UK (but not in the EU) will still be able to do this.

You will also still be able to use a UK trade mark as the base application for an application to the EU made through WIPO.

What should I do?

Although the UK government has shown that it intends to ensure continued trade mark protection in the UK for holders of EU trade marks, this is not yet law. If gaining protection in the EU and the UK is critical for your business, we advise you to seek applications in both the EU and the UK before Brexit.

For help and advice on trade marks and brand protection, contact Emma Kirkpatrick on 01905 744 992 or at ekirkpatrick@hcrlaw.com.

https://www.citma.org.uk/resources/news-policy/brexit/CITMA-Brexit-factsheet.html

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About the Author
Emma Kirkpatrick, CITMA Paralegal & Trainee Trade Mark Attorney
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