As we advised in LimeGreen IP News on Friday 24 June, the result of the UK referendum on whether the UK should remain a member of the EU may cause some uncertainty for some time from a brand protection perspective.

It is important to remember that the UK is still a member of the EU. The UK has not yet formally notified the EU of its intention to leave, so the two year period during which it will negotiate its exit and any on-going arrangements has not yet started.

With no clear plan for exiting the EU yet in sight, we recommend that clients review their trade mark portfolios now to consider whether UK trade marks ought to be filed to supplement existing EUTM protection.

Current position
There is as yet no consensus as to what the UK IP position will be on Brexit because it will inevitably depend on what subsequent arrangements are reached.
At this stage, it seems likely that there will be a number of possible outcomes.

If the UK continues to be part of the EU Single Market (for example as a member of the EEA or some similar structure) it is likely to continue to be bound by those laws which ensure that the Single Market operates effectively. This would mean that all EU-wide IP laws would continue to apply in the UK and that UK courts might be bound to interpret those laws in accordance with rulings from the Court of Justice of the European Union. This may be problematic politically for the UK.

There is no procedure in the EUTM Regulation for splitting an EUTM - which is a unitary right - into a mix of a national right and an EUTM. The only mechanism that allows the splitting up of an EUTM is conversion, and once that is completed the EUTM ceases to exist. It seems unlikely that any business that intends to continue to operate in the EU will be prepared to do this.

So it will be for the UK to decide whether it wishes to bring over EU rights so that they take effect in the UK as UK national marks (including seniority claims), or whether only UK national trade marks originally filed with the UKIPO will take effect. If some form of grandfathering is taken up as an option, it is not certain at this point when that would be deemed to occur.

This opens the possibility that gaps may appear in a portfolio retroactively, depending on the option taken up and when the relevant date at which the option takes effect is deemed to be.

Our recommendations

  • If you have existing UK trade mark rights, which you were considering abandoning or claiming seniority from in respect of an equivalent EUTM, don't!
  • Consider filing UK registrations that are identical to your current EUTM protection for your core brands now rather than waiting until a decision is reached on which option to take up so that you have the earliest possible priority date for your rights if it turns out that the UK doesn't keep EUTMs.
  • Factor UK applications into your existing filing strategies and consider filing them in parallel with your EUTM applications, or as a separate designation within Madrid applications.

A UK trade mark application is quick and cheap to get – an uncontested application in one class takes 4-6 months to register and costs £720. Hogan Lovells offers bulk discounts for applications made in volume.

If it later turns out that EUTMs will continue to apply in the UK, then it may be possible to use the seniorities procedure to wrap up the extra UK registrations into your existing EUTMs. If they don't, filing now may give you better options to protect your brands and businesses than if you waited and got a later priority date.