The United Kingdom voted to leave the European Union, stirring concerns about the future of commerce within the country. While the vote commences a two year phase out period, businesses are bracing for the departure's regulatory impact. One of the legal implications is Brexit's effect on trademark protection for businesses that have relied on registration with the EU's trademark office.
The European Union Trademark (“EUTM”) makes it possible to file one trademark application and receive a single valid right in all 28 member states of the EU. This includes trademark protection in the United Kingdom, however the UK also allows registration within its boarders alone by registering with the United Kingdom's Intellectual Property Office (“IPO”). The general consensus is that the UK's departure from the European Union will mean that trademarks filed with the EUTM will not be protected in the UK.
While theoretically EUTM registrations will cease to remain in force in the UK, the county will likely do whatever it can to forge a smooth transition and curtail the overwhelming fear that businesses will move its operations out of the UK. Moving forward, it makes sense for businesses who operate in the UK and are first asserting their trademark rights to both apply for registration through the EUTM as well as IPO.
However, one issue that arises is when businesses have filed through the European Union, but have failed to file applications in the UK because of a logical presumption that trademark protection would extend to the UK. It is still unclear whether the trademark registrations will automatically transfer from the EUTM to IPO or whether there will be an application process, but one can rest assure that the UK will do what it can do make sure there is a transfer of rights. Regardless of the decided course of action, the administrative undertaking will be massive.
Another issue is the EUTM requirement that a trademark is valid only if there is “serious use” in the EU. Marks that have established “serious use” through business conducted primarily in the UK may cease to be protected in the rest of the EU once the transitional phase has concluded.
The Brexit vote undeniably casts doubt on trademark rights both in the UK due to the large administrative undertaking of transferring EUTM registrations to IPO, and contentions that certain marks should be abandoned because of a reliance of “serious use” in the UK to establish EUTM rights. We are monitoring the status of these matters for our clients, and are happy to speak with you regarding your international trademarks. Please do not hesitate to give us a call at 650-271-9395, or email us at firstname.lastname@example.org.
Written By: Vivek Vaidya
Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.