Life after Brexit: The impact of the Trademark System: what you need to know

2016 has been an eventful and turbulent year, with some unexpected events making for interesting times.

As we approach of the new year, we are filled with uncertainty of what 2017 will hold, especially with the triggering of Brexit looming.

If you make any resolutions for 2017, make it PLANNING! Businesses will have to start make contingency plans for how they will adapt in this ever uncertain environment.

One thing that is often put on the back burner is intellectual property. At the moment (and up until Brexit takes place) a UK trademark can be obtained by applying to the UK IPO or through the EU IP Office. The latter was usually the favourite for businesses since this dealt with EU and UK trademarks in one fell swoop. If you hold an EU trademark or are thinking of registering one, then here are some points to consider:

  • At the moment, your rights and protections under UK and EU law, are unaffected
  • After Brexit, EU trademarks will cease to have effect in the UK
  • There may be a conversion process to enable EU trademarks to convert UK trade marks – however this is still unclear
  • There may be separate fees to be paid in order to protect both the UK and EU trademarks once renewal of trademarks are triggered
  • If the existing trademarks have only been used in the UK, then your trademark runs the risk of revocation
  • Any existing seniority claims based in the EU trademark based on national rights in the UK will cease to have effect after Brexit
  • If you apply for an EU Trademark after Brexit, you will have to prove you have a real and effective commercial reason for establishing a trademark in the EU
  • If you are a UK company planning on filing a trademark, then we advise you either 1) file an EU application before Brexit takes effect, or 2) simply file a UK registration only (if you only intend to have a commercial reach in the UK).

We expect that this will mean yet more increased cost for businesses and their customers, but forewarned is forearmed. Watch this space for further developments.