Breaking Brexit: Updates on the “no deal” scenario and how it will affect your European trademark rights

Since its June 2016 vote to leave the European Union (EU), the United Kingdom (UK) has struggled to agree on terms to implement a “Brexit” from the EU. As the looming March 29, 2019, deadline for the UK’s departure approached, the EU voted last week to delay Brexit and give the UK more time to agree on an exit plan. Depending on certain decisions within UK Parliament this week, the new Brexit date will either be April 12 or May 22 of this year.

Of course, this begs the question – what happens if the UK is unable to reach an agreement by the new deadline? The UK Government and the UK Intellectual Property Office (UKIPO), through publication of various draft regulations or technical notices, contemplate that a “no-deal” scenario may not result in owners of European trademark registrations (EUTM) losing protection in the UK. However, while these proposed provisions represent strong statements by the UK Government and UKIPO, they have not been passed into law.

Below is a summary of a few of the provisions that the UK Government and UKIPO have proposed in the case of a “no-deal” scenario.

EUTMs that have registered prior to the Brexit date. Owners of EUTM registrations existing prior to the Brexit date will be granted automatic, comparable trademark rights in the UK (i.e., registered and enforceable rights). These trademark rights will later be reflected on the UKIPO register without any additional fees to the trademark owner. Further, comparable UK trademark rights will have the same renewal, priority, and seniority dates as their EUTM counterparts. It is also worth noting that if an EUTM owner does not want comparable trademark rights in the UK, owners may have the option to provide an “opt out” notice subject to specific circumstances.

EUTM applications that are pending as of the Brexit date. Applications for EUTMs will not automatically be converted to the UKIPO register. Instead, applicants will have 9 months from the Brexit date to apply for registration, and pay necessary costs of such application, of the same trademark in the UK . Such an application filed within that 9 month time frame will enjoy the same priority date of the corresponding EUTM application.

Representation by trademark counsel in the EU. Counsel in the UK that are not qualified to practice under another EU member state will no longer be entitled to represent clients in trademark matters before the EU Intellectual Property Office (EUIPO) after the Brexit date.

Licenses concerning EUTMs. The terms of license agreements granting rights relating to an EUTM registered prior to the Brexit date will continue to apply to the UK by way of the comparable UK trademark rights. However some licensing terms may require modification to become pertinent to the UK.

As these provisions have not been passed into law, it is important to consider the scope of your trademark protection in Europe. If it is critical for your business to have protection in both the EU community and in the UK, you should review your trademark portfolio with your IP counsel to confirm what jurisdictions your trademark rights extend to and to consider taking the appropriate filing, maintenance, and enforcement actions prior to Brexit.

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