Top trade mark tips ahead of Brexit

18th September 2019

As with all things Brexit, nothing is set in stone, but limited guidance has been released which can help you to ensure your trade mark rights in Europe and the UK are maintained and protected.

1. When we officially exit the EU, it is currently intended that those of you with registered EU trade marks (either applied for through the EUIPO or WIPO) will automatically be granted an equivalent (comparable) UK trade mark (without cost) to ensure you still have the protection you originally applied for. This is whether we leave with a deal or with no deal.

If the UK is not a market of interest to you, or you already have a UK trade mark, there will be the option of opting out of this.

If you have an EU trade mark application pending when we leave the EU (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). So if you are likely to be in this situation, you may want to consider also filing a UK trade mark application (if you do not already have one). Bear in mind an EU trade mark application usually takes around six months to progress to full registration so any applications filed after April are unlikely to register before the current Brexit date.

2. If you currently do not have an EU trade mark, you may want to consider filing an EU trade mark application alongside your UK application or registration, in order to have an assertable right against future EU trade mark applications or registrations. Bear in mind however you will have to be able to show use of the trade mark in the EU in order to maintain such rights.

3. If you currently have a licence or security interest recorded against an EU trade mark, you will need to consider if this should be recorded against the comparable UK trade mark.

4. If you currently have potential or ongoing proceedings connected to an EU trade mark, consider if you need to expedite completion before exit day to minimise costs and potential jurisdictional complications.

5. Review if existing agreements are vulnerable to misinterpretation. Consider if clauses relating to jurisdiction, governing law and territory need to be amended.

Of course no one can predict what will happen on 31 October or beyond, but ensuring your intellectual property rights remain protected and in force should always be a key consideration for any business. Keep an eye out for our blogs and articles for further updates and guidance or contact Emma Kirkpatrick on 01905 744 992 or at [email protected].

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