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Brexit and trademark

By May 8, 2018 No Comments

The European wide trade mark regime is an aspect of the EU single market which many UK business owners will be familiar with. Intellectual Property law and its rapid development and increasing importance over the last few decades can be seen as an example of the effects of a European-wide single policy. The referendum on the UK’s continued membership of the EU is now eight days away, so how would a potential Brexit, and the opinion polls are very close, impact your current trade mark and your business’ IP past, present and future?

European trade mark regime

The EUTM is only available to EU member states, therefore on Brexit an EUTM would not be available to UK businesses.  There would probably be transitional arrangements covering various years to allow holders to convert their EUTMs into UKTMs. Existing EUTMs held by UK businesses would still be effective in other member states up until their respective renewal dates, with renewal almost certainly barred.  If you have an EUTM but your operations are more or less limited to the UK only, then your mark would probably be vulnerable to revocation in other member states on non-use grounds.

Caselaw changes

On Brexit the Courts in England & Wales, Scotland, and Northern Ireland would no longer have to interpret domestic law in line with EU-wide law and British Judges would be able to depart from European law. This however could be a double-edged sword as there are examples of EU law providing a positive development to UK IP rights, and vice-versa.

Cross-jurisdictional litigation and costs

A potential Brexit would almost certainly lead to an increase in the amount of money spent by British companies enforcing their IP rights. This is because EU-wide infringement proceedings, as well as EU-wide injunctions preventing infringement will no longer be possible. So if there is a competitor company operating in Spain, Germany, Italy and France, a British company would have to file proceedings and injunctive relief in all four countries. The same of course applies to any new trade mark, or the same trade mark once the EUTM reaches its renewal date: it would have to be filed in all respective EU countries that the UK company wishes to operate in.

In the above example four is probably an unrealistic hypothetical, as the remaining EU countries would of course still operate as a single-market, so any competitor company is more than likely to operate in more than four jurisdictions. Therefore it is conceivably possible that a UK company would have to file 27 separate trade mark applications, one in each EU member state.

Conclusion

There will be practical implications to British trade marks on a potential Brexit. Should the UK withdraw from the EU British firms would be well advised to apply to convert their EU-wide marks into UK marks as soon as possible. Should Brexit not happen, it will remain prudent for firms to hold both UK and EU-wide marks.

If this article interested you and you wish to discuss how a trade mark can help your business, or you wish to discuss your current trade marks, please do contact us using the contact form on this website.