WNA Blog

Tue 2 Aug 2016

Brexit | How Does It Affect Trademarks in the United Kingdom?

Business Planning & Strategies

With the United Kingdom(UK) public voting to leave the European Union (EU) last month, many European Union (EU) registered trademark owners have been wondering what will happen to their trademark protection as the result of this momentous event. 

Most EU expert commentators estimate that the divorce between Britain and the European Union will be finalised within a two-year period therefore June 2018 is the likely date of the exit from the EU.  Until then, the status quo remains in place.

We believe that there will be a process introduced to convert registered EU trademarks to a national UK trademark.  We expect that European Union Trademarks (EUTM) will become vulnerable if the registered EU trademark, is not actively used in any of the EU member states. The benefit of a European Union trademark is that the trademark owner has the protection within all of the EU country states without the need to promote or and use the brand in each or all of the member countries. They just needed to be used in some of the EU states.

The situation may be different however for UK companies, especially if they are currently only selling or promoting their product, service or use of their business name in the UK, and have not used it in an EU country.  If this is the case they are exposed to having their trademark revoked for “non-use” by a third party.

We do not automatically recommend that clients apply for the European Union trademarks (EUTM) instead; we recommend that they consider whether they are intending to “actively” use and promote their brand across the EU. The reason for this caution is that the EU trademark is difficult to obtain because all EU member states must approve the application, or the application does not progress to registration. Imagine being turned down for your targeted countries including France, Germany, Denmark, Spain and until recently the UK, just because another EU member country has turned down the application.

By applying for an EU trademark, you are in fact decreasing the odds that the application will move to registration. The phrase; a bird in the hand is worth two in the bush; definitely applies when considering applying for an EU trademark.

Therefore, our preferred trademarking strategy in the EU is to evaluate one of the following options:

(i)            The Madrid protocol- this is where trademarks can be applied and registered under a single application in multiple jurisdictions. The UK is a signatory to the Madrid Protocol. Thus it is business as usual for an application lodged via the Madrid Protocol for national UK trademark protection.

(ii)           If there are less than five countries the client wishes to trademark in, we recommend direct filing to those countries instead of applying via the Madrid Protocol. The reason is that if a country rejects the application via the Madrid Protocol, that application must then be converted to a country-specific application, this means extra fees has to be paid to continue the application.

Whether you think the Brexit result is good or bad, at least there is a Plan B for those embarking on protecting their trademarks in the UK or anywhere else in Europe. Like any divorce, life must go on and we must make the best of the situation.

If you would like to discuss your particular trademark situation please leave me a comment below.

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