What does a no deal Brexit mean for your EU trade mark?

Deal or no deal, if you have an EU trade mark you’re naturally going to be wondering what happens to it after the UK leaves the EU… In the first few weeks after the Brexit vote this issue was considered by many IP practitioners and it was generally thought that there would be some sort of conversion process in which EU trade marks would still be enforceable in the remaining member states and a new trade mark would be created on the UK trade marks register. This all sounded perfectly sensible but then questions started getting raised… How much would this cost? Who would pay (the UK, the EU or the TM owner)? How long would it take? What would be the filing date for the new UK mark? Would there be a separate examination process? Would there be a new opposition period? Would the UK Intellectual Property Office be able to handle thousands of new trade marks? Would Nigel Farage be involved somehow? All good questions and all questions which haven’t yet been answered.

The months passed and, on 6 September, the European Commission decided to prompt the UKIPO by publishing its proposals for the conversion process. It dodged most the responsibility (bloody Brussels) and suggested that the UKIPO would be on the hook for ensuring that the process didn’t result in any diminished protection for EU trade mark owners. This was met with silence from the UKIPO… and time marched on.

Over the last few months the Brexit negotiations have appeared to be a little shaky and the prospect of a “no deal” or “hard” Brexit has become increasingly likely. On 1 December the EU clearly felt that it would have to address the elephant in the room i.e. what would actually happen to EU trade marks if there was no deal? It did this by publishing a brief notice outlining the position. In short, it said that if there is no deal to the contrary agreed, all EU trade marks will cease to be enforceable in the UK on day one of Brexit. EU rights holders will therefore be completely without UK protection and will not be able to pursue any UK infringers on the grounds of their EUTMs.

On reflection, this is perhaps fairly obvious but the starkness of the notice is enough to give even the most ardent Brexiteers pause for thought. It essentially means that holders of EU-only trade marks need to start thinking pretty seriously about filing new UK trade marks, and soon– particularly in light of the fact that if no deal is agreed the UKIPO is going to be flooded with new applications from all over the EU as rights holders scramble to fill the gaps in their trade mark portfolios. In light of this, although the position still hasn’t been decided Briffa’s advice is to get your UK application in sooner rather than later, luckily they’re cheaper than EU trade marks (one mark in one class = UKIPO fee: £170, Briffa fee £350 + VAT) and so it’s an achievable undertaking. It also has the added benefit of bolstering your intellectual property portfolio, considering that this typically accounts for 80% of the value of most businesses, it certainly can’t be a bad thing.

For more information on filing UK trade marks please contact info@briffa.com or speak to one of our politically-neutral solicitors on 020 7096 2779.