Since the UK voted to withdraw from the European Union in 2016, uncertainty has become the norm for companies doing business in the region. With respect to protecting valuable trademark rights, many businesses adopted a “wait and see” approach in lieu of preemptively filing national trademark applications in the UK. However, with the exit deadline now looming (March 29, 2019), and no withdrawal deal in place between the UK and EU, Brexit’s uncertainty is beginning to feel a bit like insanity.
One thing is clear right now: if the UK leaves the EU without a deal, your EU trademark registrations will no longer protect you in the UK. Fortunately, the UK has issued draft regulations that are expected to be adopted before Brexit that should help to ease the transition for EU trademark owners. To take advantage of these regulations and save potentially thousands of dollars in fees, there are two action items that you should be doing now, before March 29th.
Background By way of quick review, the European trademark system exists on two levels: the EU has its own system, as does each member country. Although filing at the EU level can cost more than a single national application, it provides trademark protection in all 28 member countries. For companies doing business in more than one EU member country, the EU-level filing is a great value in terms of cost and efficiency. EU trademarks last for 10 years and can be perpetually renewed every 10 years.
Britain’s governing trademark authority is expected to pass regulations that will provide automatic UK trademark protection for all EU registrations in existence as of March 29th. For example, if an EU registration has eight years of protection left, you will automatically receive eight years of trademark rights in the UK if the regulations are adopted as expected. This automatic protection would be a great benefit for businesses, but there are two things that you should be doing before Brexit that are not automatic and that could save you considerable money.
Action Items for EU Trademark Holders Assuming Britain exits the EU with no deal but does adopt the expected trademark regulations, we advise our clients to take the following actions:
- Review your trademark portfolios to determine if you have EU registrations that are eligible for renewal. If you do, and you are interested in preserving rights in the UK, obtain your renewals before March 29th.
- If your EU registrations are not up for renewal, or if you have pending EU applications that are not expected to obtain registration prior to March 29th, we recommend that you file national applications in the UK if you would like protection in the UK.
We do not recommend a wait and see approach for a few reasons. First, you could miss the “2-for-1” cost savings provided by the EU registration by not renewing before Brexit. Second, and perhaps more importantly, if you let your rights lapse in the UK, you will open the door for trademark trolls who are no doubt biding their time to take advantage of unwitting trademark owners by swooping in after Brexit to snatch up lapsed rights.
Ultimately, Brexit will mean increased costs for companies doing business in Britain and elsewhere in Europe since future trademark protection in both regions will involve two separate filings. By taking action before Brexit, though, you can save yourself time and money–and perhaps a bit of sanity on an otherwise wild ride for global businesses.