Get your trademarks in order before Brexit bites: Paul Carlyle

Paul Carlyle is Head of Intellectual Property at Shepherd and Wedderburn LLP

Currently, UK businesses can register distinctive words, symbols, and branding for their exclusive use throughout all 28 European Union member states. However, this system will change after Brexit, and EU trade marks (EUTMs) will no longer be directly enforceable in the UK.

The current impasse at Westminster and the ascendancy of Boris Johnson makes a no-deal Brexit a more likely outcome on 31 October. The UK Intellectual Property Office (IPO) has issued guidance on how it will respond in the event of no-deal to ensure that those who hold EUTMs continue to have those rights protected in the UK post EU exit.

For all EUTMs, the UK IPO will create a comparable UK mark. These will be created automatically and free of charge, and rights holders will be notified that a new UK right has been granted. Only EUTMs that are registered on the day the UK leaves the EU will be cloned into the UK register. Pending applications will need to be refiled in order to obtain protection in the UK.

For those UK businesses that have been applying for UKTMs in parallel with EUTM applications, this will not pose an issue. For those relying entirely on EUTM applications on the basis of a trade mark strategy that, at the time, assumed continued UK membership of the EU, care is required, particularly for applications not yet granted.

Comparable UK marks issued by the UK IP0 are not a guarantee for businesses in perpetuity. They will be treated as if they had been applied for and registered under UK law. As a result, they can be challenged, assigned, licensed or renewed independently of the original EUTM.

Proactive management of these comparable trade marks will be required in order to protect and commercialise these rights post-Brexit, and those already held by UK businesses. The addition of all 1.7 million EU trade marks and registered designs onto the UK register may threaten those with only a UK strategy for their branding.

In the event that the UK does leave the EU on 31 October, holders of UK trade mark rights and UK businesses may need to review the UK register after 1 November to assess the threat posed to their brand by any new comparable UK trade marks. Earlier rights may need to be asserted against the newcomers to ensure brand integrity, or solutions to competing rights found.

The comparable UK marks also raise questions for EUTM holders globally. After Brexit, they will become the holder of an unexpected new right, which may in turn lead to unexpected consequences. One possible scenario is a challenge to either the original EUTM or the new comparable UK mark on the grounds of non-use. Until now, use of the protected words or visual branding in the UK predominantly, with minor use in a few more member states, has been enough to defend a cancellation action before the EU IPO and retain protection for the registered right across the EU. This will no longer be the case. To protect the original EUTM, businesses will have to show they are using their right in EU countries, and will have to do the same in the UK to protect the comparable UK mark.

The complexity of navigating the post-Brexit trade mark regime in the UK and EU underlines how crucial it is to ensure a proactive management strategy for trade mark portfolios, and the need to engage with experienced advisers. We have advised clients in this space for many years and through our office in Dublin are able to continue to provide EU law advice and help clients manage the transition in the run-up to Brexit and beyond.

Paul Carlyle is Head of Intellectual Property at Shepherd and Wedderburn LLP