Government offers Brexit assurances to European trademark holders

With the UK’s expected departure from the European Union just weeks away, those with registered intellectual property rights are becoming increasingly concerned for any implication this may have for their registrations.

The exact nature of the new trading relationship is not yet known and in all likelihood may not be known with any certainty right until the last moment.

At issue are EU-wide trademark registrations, or EUTMs. Once granted, these conveniently offer trademark protection and registrations across all members of EU, and are relied upon by UK businesses to offer security throughout the UK as much as across the continent.

Such concerns were addressed head on in the currently defeated withdrawal agreement, which provided that holders of EUTMs registered before the end of the transition period will become holders of comparable UK marks.

There had been concerns that once the UK ceases membership of the EU, on a strict reading of the law immediately following a “no-deal” exit, an EUTM would offer no official UK protection – they will cease to be enforceable.

Such concerns appear somewhat wide of the mark since the government’s technical notice on trade marks and designs states that in a “no-deal” it will ensure that property rights in all existing EUTMs will be continue to be protected and enforceable in the UK by providing an equivalent right from exit day. But it is unclear if any action is required by owners to secure such rights or if any fees will be payable for the grant of equivalent rights, commenting only that there will be “minimal administrative burden”.

The terms of the technical notice are backed up by the Trade Marks (Amendment etc.) (EU Exit) Regulations 2018, which are currently before parliament. In force on exit day, they ensure that trademarks registered as EUTMs will confer the same rights in the UK as UK registered marks.

So it would seem that in the vast majority of cases, EUTM rights held by UK businesses will continue to be valid in the UK post-Brexit. But with the political climate still volatile, and the exact terms of the departure yet to be agreed, it is an area which concerned owners must remain up to date with.

MORE INFORMATION​

If you are concerned about the implications of Brexit for your business then contact a member of our Company Commercial Team for more information. ​ This article was written by Edward Garston, Senior Associate and Head of Company Commercial at Pinney Talfourd LLP Solicitors. The contents of this article are for the purposes of general awareness only. They do not purport to constitute legal or professional advice. Specific legal advice should be taken on each individual matter. This article is based on the law as of January 2019.​