on 23 June 2016 the United Kingdom
voted to leave the European Union -
Brexit. The UK is expected to enter into a
negotiation period during which the terms
of withdrawal from the EU will be settled.
The exit date is not yet known, but it will
be triggered by the UK invoking Article 50
of the Lisbon Treaty. Current reports sug-
gest that the new British Prime Minister,
Teresa May, will not formally notify the
EU of the UK's intention to leave until
2017.
two-year countdown for leaving the EU
will begin. Indications are therefore that
the UK will cease to be a part of the EU
at some point in 2019.
current political situation in the UK can
best be described as uncertain, and
despite the creation of a new cabinet
position `Secretary of State for Exiting
the European Union' there have been no
definitive policy announcements on Brexit
to date. IP is also one of a myriad of
issues that the UK government will need
to address overseeing the UK's withdrawal
from the EU, so the position is unlikely to
be clarified in the near future.
UK specifically, the position at present is
entirely unchanged. However, once Brexit
happens, and assuming that the UK does
not join the European Economic Area
(EEA), there are likely to be some
significant changes, not least in that
EUTMs may potentially no longer cover,
or be effective in, the UK.
protection in the UK?
for obtaining registered trade marks which
cover the UK: a) UK registered marks,
which are obtained through and
administered by the UKIPO; and b)
European Trade Marks which are obtained
through and administered by the EUIPO.
Brexit will have no impact on UK
registered marks.
EU, the strong likelihood is that EUTMs
will cease to have effect in the UK. This
only way to obtain new registered trade
mark protection in the UK will be to file a
new UK trade mark. Protection for the
rest of the EU will be possible by filing an
EUTM, as before, or by applying to
national offices in the country of choice.
EUTMs? Will rights in the UK be
lost?
expectation is that there will be provisions
to ensure there are no loss of rights in
the UK for owners of existing EUTMs. At
present it is not clear what that mecha-
nism will be, but the consensus is that it
may be one of the following three options:
EUIPO and UKIPO - essentially that the
UK is treated as still being part of the
European Union Trade Mark system by
the EUIPO and that EUTM rights apply
equally in the UK. This is considered
unlikely.
registrations. Again, some consider this
less likely due to the potential burden it
would place on the UKIPO.
based on the existing EUTM
application/registration. This seems the
most likely outcome, with the
administrational cost being passed on
to the rights holders.
protect and enforce their trade
marks in the EU after Brexit?
(or natural persons) from applying for and
owning EUTMs, since the system does not
require the holder of an EUTM to be
from the EU. They will also still be able to
enforce these rights against third parties.
seniority claims?
However, owners of EUTMs should no
they might previously have done in favour
of recording a seniority claim against an
EUTM. Instead, they should continue to
maintain their UK marks.
been used only in the UK?
single member state is potentially
sufficient to maintain an EUTM
registration (although there may be some
doubt about this following the UK High
Court judgment in The Sofa Workshop
Ltd v Sofaworks Ltd). Post-Brexit,
however, if an EUTM has only been used
in the UK, then the EUTM could become
vulnerable to revocation for non-use. The
only way to safeguard the position in the
remaining EU member states would be to
start use of the trade mark in some or all
of those states, or to file new national
applications.
registrations based on an EU trade
mark?
registration (IR) based on an EUTM will
be unaffected by the UK's exit from the
EU.
UK companies looking to file new IRs
based on an EUTM will be required to
prove they have a real and effective
commercial establishment in an EU
member state in order to rely on the
EUTM as a basis for the IR.
which apply to "the EU"?
to settle disputes, as well as licences and
distribution agreements will usually specify
the geographical scope, often referring
simply to "the EU". These should be
reviewed to clarify their scope and to
ensure the terms continue to apply in the
UK post- Brexit. They may also require
revision or a new agreement. Any
agreements concluded between now and
Brexit should include a specific reference
to the UK and the EU, and not only the
EU.