Firms urged to act now to protect trade marks post-Brexit

As Brexit throws doubts over the future of European trade mark and design registrations presently covering the UK, businesses are being urged to take steps now to protect themselves.

Businesses are being urged to act now to ensure their intellectual property is protected, as concerns rise over a lack of Brexit clarity regarding EU trade marks and design rights.

Alarm is growing among specialist trade mark and design attorneys at the apparent absence of a clear government vision on how some important intellectual property rights will be affected when Britain makes its departure from the EU.

And it’s feared the key issue affecting thousands of businesses which could be at risk of having trade marks or designs illegally copied, is being left to drift while the government focuses on other Brexit problems.

Chris Finn

Christian Finn, Glasgow-based trade mark director at Murgitroyd, one of the UK’s respected intellectual property attorney firms, is urging businesses which have registered EU Trade Marks (EUTM) and Registered Community Designs (RCDs) to ensure they have sufficient UK protection in place to cover any eventuality.

“There is concern that this issue does not appear to be high on the government’s list of priorities,” he warned. “The worry is we will get to the cliff edge and businesses which only have EU trade marks will be left in limbo as to whether those rights are still protected in the UK or not.

“The rights they have at the moment are wide-ranging. However, they could become quite ephemeral. For example, businesses could find that, when it comes to trying to stop someone creating counterfeit goods, they have not got a leg to stand on.

“UK enterprises doing business in both the UK and EU would be well-advised to file both EUTMs/RCDs and UK national trade mark/registered design applications.”

Trade mark-owning UK businesses contribute around £650 billion to the UK’s GDP annually.

Since April 1, 1996, it has been possible to protect trade marks - and, since 2003, “industrial” designs - throughout the European Union by means of a unitary registration system.

EUTMs and RCDs have proven extremely popular for businesses trading within the EU single market: almost 18m EUTM applications and almost 5m RCD applications have been filed with the EU Intellectual Property Office (EUIPO).

UK-based entities have historically been the second-highest filers of EUTM applications – behind Germany - for most of this decade, filing an average of 10,000 EUTMs per year. They are also the second-highest filers of RCDs, owning almost 15 per cent of all RCDs.

However, Brexit has thrown doubts on whether existing EU rights will still extend to the UK once the UK formally leaves the EU in March of next year.

According to Mr Finn, trade mark and IP experts are increasingly concerned both over how businesses’ existing EU IP will be protected in the UK in future, and who will pick up the bill for any UK re-registration that may be required.

Fears have mounted since the EUIPO said in December that it would regard the UK as a “third country” from next March, with EUTMs and RCDs no longer having any effect in the UK. This means UK courts would no longer have jurisdiction over infringements of EU trade marks or RCDs.

Despite representations from professional trade mark and IP representative bodies calling for the UK government for clarification, up until March there had been only a brief ‘Technical Note’ which accepted the need for continuity in respect of ‘EU-derived’ IP rights.

In February, the EU Commission’s Draft Brexit Withdrawal Agreement proposed that any EUTMs and RCDs registered or granted before the end of the UK’s transition period would automatically shift to become the UK equivalent, without the need for fees or re-examination.

However, Mr Finn warned that whilst the UK Government had accepted the principle of automatic conversion of EU rights to UK equivalents in their recent response to the Draft Withdrawal Agreement, there was still no agreement regarding the possible payment of additional fees. The Draft Withdrawal Agreement also potentially extends the cover of EUTMs and RCDs in the UK until December 2020.

He added that alternatives had been proposed which could see fees levied and EU trade marks re-examined before being entered onto the UK register – raising concerns over costs and potential delays as the UKIPO struggles to cope with adding millions of existing EUTMs and RCDs to its own national databases.

“UK businesses will want clarity in terms of their intellectual property protection in the EU and UK,” he added.

Mr Finn said business in the UK and EU with new trade marks and designs should now to take steps to protect themselves by filing both in the UK and in the EU.

And he called for those with EUTM registrations alongside a UK equivalent to retain both.

“But where no such parallel right exists, new UK applications should be filed in the period leading up to March 30, 2019,” he added.

“My advice is to stay on the safe side.”

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