If your business operates in any of the member states of the European Union (EU), you need to be aware of how Brexit could potentially affect your trade marks. Brexit is the term coined for the United Kingdom’s (UK) decision to leave the EU. The UK government recently extended their 31 October leave date, but it is not clear how long they have extended it for.

If you have a European trade mark (EUTM) application or operate in the UK, you need to understand how to protect your business following Brexit. This article breaks down what you need to know about how Brexit will affect your trade mark.

Current UK Trade Mark Protection

Currently, businesses looking to protect their trade mark in the UK can protect it through a EUTM application. A European trade mark will protect your trade mark for ten years in each member state. Therefore, it is a cost-effective and straightforward way to protect your brand in multiple markets.

Currently, you can apply for a UK trade mark at the same time as a EUTM. This can be beneficial as your UK trade mark may be approved even if the EU does not approve it. But, if one member state fails to accept your EUTM application, then you will need to apply to each member state individually.

What Happens to Your Trade Marks After Brexit?

At present, an EUTM provides trade mark protection in all member states, including the UK. When the UK leaves the EU, EUTMs will no longer protect your trade mark in the UK. The UK Intellectual Property Office (IPO) will convert all existing EU trade marks to UK marks without charge. The converted UK marks will come into force at the point of the UK’s exit from the EU. 

Once converted, these will operate like any other UK IP right, requiring renewal fees at the ten-year mark. Further, you will be able to assign and licence the comparable mark. 

Simply put, if you have an EU mark, this will convert to a UK mark at the point of Brexit.

What Happens to Pending EU Trade Marks?

If you have a pending EU trade mark at the point of the UK’s exit from the EU, you have nine months from the exit day to apply for a UK trade mark. You can do this via the IPO trade mark application system and will need to pay an application fee. You will be able to record a priority claim based on your earlier EU mark application if it is identical to your new application.

Before applying for your UK trade mark, you should search the EU trade mark register. This will help you identify any marks that were pending on the exit day or may have an earlier filing date than your own mark.

Can You Opt-Out?

There will be roughly one million UK trade mark rights created when they exit the EU. If you would not like your trade mark to be automatically created under the UK register, you can opt-out.

This would also apply to any of your marks that:

  • you have assigned, 
  • you have licensed; or 
  • are involved in litigation.

To opt-out, you will need to fill out a form on the UK government’s website that is available after the exit.

Licences and Security Interests

If you hold a EUTM which is subject to a licence of security interest, you may be concerned about what will happen in the event of Brexit. It could be problematic if your agreement authorises actions in the UK which would otherwise infringe the EUTM.

The UK has prepared for this scenario and will treat any licence or security interest that references a EUTM as if it applies to the comparable UK trade mark.

You should notify relevant parties that your new trade mark right will be created in the UK and check that this will not breach any agreements you have in place. 

Use and Reputation Rights

To prevent the removal of your trade mark and enforce your rights, you must prove that you use your trade mark in the relevant regions. After Brexit, the UK will recognise the use of your comparable UK trade mark in the EU, not just the UK. This will ensure that the process is just and fair.

Key Takeaways

The existing UK trade mark system will be mostly unaffected by the UK’s decision to leave the EU. When the UK leaves the EU, a comparable UK right will be created for your registered EUTM. If you have a pending EUTM, you will have nine months after Brexit to apply for a UK trade mark. If you have any questions about protecting your overseas trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page. 

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Sophie Glover

Get a Free Quote Now

If you would like to receive a free fixed-fee quote or get in touch with our team, fill out the form below.

  • We will be in touch shortly with a quote. By submitting this form, you agree to receive emails from LegalVision and can unsubscribe at any time. See our full Privacy Policy.
  • This field is for validation purposes and should be left unchanged.

Privacy Policy Snapshot

We collect and store information about you. Let us explain why we do this.

What information do you collect?

We collect a range of data about you, including your contact details, legal issues and data on how you use our website.

How do you collect information?

We collect information over the phone, by email and through our website.

What do you do with this information?

We store and use your information to deliver you better legal services. This mostly involves communicating with you, marketing to you and occasionally sharing your information with our partners.

How do I contact you?

You can always see what data you’ve stored with us.

Questions, comments or complaints? Reach out on 1300 544 755 or email us at info@legalvision.com.au

View Privacy Policy