EUTMs and Registered Community Designs are the only UK property rights that have a pan-European reach and, therefore, the impact of Brexit is unique in this regard.
Whilst EUTMs remain valid and enforceable in the UK for the time being, when the UK formally leaves the EU, as it currently stands, EUTMs will cease to have effect here. However, there will no doubt be transitional provisions put in place to ensure continued protection for existing EUTM owners, as the commercial (and PR) cost of such monetised assets simply expiring would be vast.
The most likely options at present seem to be either:
- all existing EUTM registrations would be automatically entered onto the UK Register with the same scope of protection and registration date, or
- all existing EUTM registrations would be entered onto the UK Register, as with option 1, but only if the owner positively opts in to do so.
The benefit of the above two options is that they could be adopted unilaterally by the UK without requiring the agreement of the EU or EUIPO. However, the devil is in the detail and all the possible scenarios raise numerous questions such as additional examination, UK representation and use requirements, in addition to costs, to name just a few.
Whilst we wait to see how these transitional provisions will develop, it’s sensible for now to be aware of the possible options, and consider separate and/or additional national protection in the UK when assessing both filing and enforcement strategies with respect to your brands.