Following the UK’s vote to leave the European Union, we consider the potential implications for trademarks and designs, an area that is extensively harmonized through legal concepts such as the EU trademark and the Community design.

Key issues

The outcome of the referendum has no immediate consequences on EU trademarks and Community designs as the election itself does not affect the legal position of the UK as an EU member state. EU trademarks as well as Community designs therefore continue to provide the same scope of protection to rights holders in the UK. It also remains possible to apply for new EU trademarks and registered Community designs which extend protection to the UK and there will be no changes for legal proceedings involving EU trademarks and Community designs initially.

There is no doubt that the status of EU trademarks and Community designs will be among the topics covered during the exit negotiations. As for many other areas, much will depend on the outcome of those negotiations. However, based on current EU legislation, EU trademarks and Community designs would no longer cover the territory of the UK once the UK leaves the EU. Although not absolutely certain, it is anticipated that the UK will offer a conversion or create an equivalent national counterpart for existing EU trademark registrations.

Potential impact

If the UK leaves the EU, Community designs as well as EU trademarks will no longer cover the territory of the UK. It is anticipated that the UK will permit owners of such EU rights to request a conversion of their EU registrations into national UK registrations. Such national UK registrations may also retain the original filing date of the EU rights. Beyond these assumptions, much remains unclear at the moment. Will the UK Intellectual Property Office (UK IPO) simply accept the list of goods and services of the prior EU trademark or will there be a new examination process, as would be the case currently where rights holders decide to convert their EU trademarks into a bundle of national rights? Which fee structure will be applied for the conversion process? How long will the conversion process take? Will the “new” national UK trademarks be subject to (another) opposition period? The UK IPO may also ask the applicant to either prove use of their mark in the UK or request that the applicant declare a bona fide intention to use the mark in the UK, as is currently required when applying for an UK trademark. Some concern has also been raised whether EU trademarks may become subject to non-use cancellations once the UK leaves the EU.

Owners of EU trademarks and registered Community designs who make use of the national UK filing system will not need to alter their current filing strategies. However, brand owners who have no parallel registrations in place and regard the UK market as relevant may need to reconsider their filing strategies.

Further considerations

The effects of Brexit on legal proceedings involving EU trademarks and Community designs will also need to be clarified during the exit negotiations. Whereas new legal proceedings involving EU trademarks and Community designs will no longer cover the UK, it will be interesting to see how the scope of protection of already binding judgments with EU-wide applicability will be assessed with respect to the UK after the exit.

Actions

  • No immediate consequences for EU trademarks and Community designs as the scope of protection of these rights remains unaffected for the time being.
  • Continue to observe the further Brexit discussions to learn about a potential conversion process for existing EU trademarks or registered Community designs.
  • Rights holders with particular interest in the UK may want to consider national UK applications for trademarks and designs, in particular for their core brands, to avoid uncertainties in upcoming exit negotiations.