With the overnight referendum result in the UK, and the UK voting to leave the EU, a number of our clients are asking what the effect will be on their European Union Trade Mark (“EUTM”) Registrations, whether they will continue to offer protection in the UK, and/or whether they should be contemplating new national UK trade mark filings. This concern will be particularly acute for businesses have opted for the pan European protection of the EUTM over national filings in the UK.
We will be keeping a watching brief on this issue over the coming weeks as we all grapple with the news and what it means, and will continue to update you with our thoughts and recommendations.
For the moment, it is important to bear in mind that EUTMs remain valid and enforceable in the UK and there is no immediate loss of protection. The UK primary legislation implementing the EU Trade Mark Directive will remain in force unless or until separately repealed by Parliament.
There will be a two year period to negotiate the terms of UK’s exit from the EU, which starts from the date the UK Government officially notifies the EU of its intention to leave. Whilst the UK government has said that it will give notice quickly after the vote, it has not yet said when that will be. Following the resignation of David Cameron today, notice will not be given until after a new Conservative leader and Prime Minister have been appointed. The UK will remain a Member State of the EU during this process. The negotiations need to be completed within two years, although this period can be extended if the negotiations are on-going and if all 28 EU member states agree.
Whether protection will continue in the UK and in what form for existing EUTM registrations will depend on what exactly arrangements the UK agrees with the EU during this process. It seems probable that something will be agreed whereby either trademarks filed before the date of exit continue to have effect in the UK, or that there is a period during which a rights holder will be able to convert a EUTM into a (new) EUTM and a national mark in the UK with the same priority. At the moment, this cannot be guaranteed. This is likely to be the subject of discussion and lobbying over coming months. If this happens, it is likely that there will be administrative fees associated with the conversion process.