Last month we discussed the EU's position on what they would
like to achieve from the Brexit negotiations. This month we
focus on the practical implications of trade mark protection in
the UK with a simple Q&A.
Will I need to file separate EU and UK applications
after Brexit (possibly 2019)?
Almost certainly yes, unless the UK and the EU agree a
What about my existing EU registrations?
There has been much discussion as to whether existing EU
registrations will be automatically transferred over to the UK
register. The favoured approach at the moment is the so called
'Montenegro Option', where all registrations would be
automatically transferred without the owner needing to pay
additional fees. However, as there would be a cost implication
to this, there is the strong possibility that the final
agreement would mean existing registration owners would have to
pay an additional fee and top up application to ensure that
transfer to the UK Register did indeed happen. It is now
prudent to consider refiling a stand-alone UK trade mark
application to ensure coverage in the UK if this market is of
strategic commercial importance.
What will happen if my EU application is pending or
opposed when the UK officially exits the EU?
Again, there is no clarity on this issue, however it appears
that the UK and the EU are considering allowing pending EU
applications (including those under opposition) to remain with
the EUIPO until registration.
What about agreements and licences involving EU
Co-existence agreements, licences and other agreements
having effect in the EU should be reviewed now as they may need
amending. Also registration owners who have been involved in
litigation relating to EU should also review their settlement
agreements. New licences and agreements should be worded
carefully to ensure that they are 'Brexit' ready.
Will I be able to rely on use of my trade mark in the EU
to support a UK registration?
If a system for transfer of EU registrations onto the UK
register does come into effect, there are difficulties for the
UK concerning trade mark use. All newly created UK 'Ex EU'
registrations would become vulnerable to a non-use cancellation
action five years after the original EU registration date.
Brand owners should consider their geographic use strategy in
light of this issue.
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