Preparing Your Trade Marks For A Brexit Deal, Or Not
Guidelines on European Union Trade Marks
On the first of March, the Government issued guidelines on its approach to European Union Trade Marks (EUTMs) in the UK following a no-deal Brexit. For EUTM registrants and applicants. The key points concerning coverage are as follows:
The Salient Points
- Existing EUTM owners: if your EUTMs are already registered they “will be treated as if they had been applied for and registered under UK law” on Brexit day. They will keep the same filing/priority/seniority dates.
- Existing EUTM applicants: if you have applied for an EUTM, but it has not yet been granted by Brexit day, then you will be able to take the filing/priority/seniority date of your application and use it to apply for a new UK trade mark. The usual fees will apply for the UK filing. This seems to be one of the key differences between existing EUTM registrations and EUTM applications. The application will be examined from scratch.
- New EUTM applications: following Brexit day, an application for an EUTM will no longer cover the UK.
This announcement comes as no great surprise. The government’s position has consistently emphasised the need for continuing rights for EUTM registrants and applicants in the UK. It is welcome though, given that no-deal poses the biggest threat to EU rights holders in this territory.
Seniority applicants will breathe a sigh of relief, having converted chunks of their UK portfolios into EUTMs. It looks as though it will be a relatively painless transition back to separate UK marks.
Our advice continues to be that filing in the EU and the UK separately is only useful for applicants in the sense that it provides certainty from the application date (examination/opposition issues aside) that the mark is covered in the UK. There are no guarantees over the final form of Brexit, or whether Brexit will even happen at all, and dual filing heads off this uncertainty. However, the government’s no-deal advice indicates that there is no significant risk of a gap in coverage if applicants choose to file in the EU alone and then separate out the UK protection at a later date – even in the worst case scenario. For applicants on a tighter budget, filing for an EUTM on its own is unlikely to render you unprotected on Brexit day.
If you would like a discussion or advice regarding your EUTM situation, contact our IP & Media Team.