EU Trade Marks after Brexit

With the political landscape and future of the UK in a state of flux, it's hard for organisations to determine what, if anything, they should be doing to prepare at the moment. One area that might fall under the radar is an organisation's intellectual property portfolio and, in particular, what will happen to the protection of trade marks registered in the EU ("EUTMs") following the UK's eventual (we assume, but let's not rule out another referendum just yet) divorce from the EU.

Position under the withdrawal agreement

May's oft deliberated and maligned withdrawal agreement sets out the following principles:

• The UK will leave the EU at 11:00pm on 29 March 2019 ("exit day"). The withdrawal agreement provides for a transition period ending on 31 December 2020. During the transition period, EUTMs will continue to be recognised and enforced in the UK by the UK courts.
• If an organisation is the owner of an EUTM, or becomes the owner of an EUTM before the end of the transition period, the organisation will become the owner of a comparable trade mark in the UK. This will happen automatically without a further registration process or a requirement to pay any further fees.
• If an application for an EUTM is pending at the end of the transition period, there will be a further nine month period (i.e. up to 30 September 2021) during which the organisation can file a UK application for the same rights and benefit from the same filing date as the pending EUTM (assuming the EUTM is subsequently registered). This will not happen automatically and it is likely there will be further filing fees associated with this.
• If, at the end of the transition period, proceedings are in progress to revoke or declare invalid an EUTM, any subsequent decision in respect of that EUTM will apply to the corresponding UK trade mark that was created in respect of the EUTM.
• UK attorneys and lawyers will continue to be able to exercise their representation rights before the EU Intellectual Property Office during the transition period.

Position if there is no deal

In the event of "no deal" (as it stands at the moment):

• The UK will leave the EU on the exit day. There will be no transition period.
• The government has stated that EUTMs will continue to be protected and enforced in the UK by providing an equivalent UK right from exit day. It is unclear what organisations will have to do (if anything) in order to obtain this equivalent right or whether there will be any associated fees; the government has simply stated that there will be "minimal administrative burden".
• If an organisation has an application for an EUTM pending on exit day, the organisation will have a period of nine months from exit day to apply in the UK for equivalent protection with such UK application retaining the same filing date as the EU application. The organisation will have to go through the same process and pay the same fees as if it were filing a usual UK trade mark application.
• UK attorneys and lawyers will cease to be able to exercise their representation rights before the EU Intellectual Property Office following exit day.

Steps to take now

EUTM owners should - where the UK is a key territory - take steps to review what protection they currently have in the UK (for example, whether they have an equivalent, separate UK trade mark) and consider what steps they will need to take to ensure continued protection of their EUTMs in the UK following Brexit. If your organisation requires any assistance with this, please contact any member of our Commercial and IP Team.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.