Questions & answers: Brexit implications for trade marks

Will Brexit impact on the rights of my EU protected trade marks in any other EU member states?

No.

How will ‘genuine use’ and ‘reputation’ be assessed for my new EU trade mark?

The new law is designed to ensure that any use of the mark in the EU, whether inside or outside of the UK, which has been made prior to exit day, will count as use of the comparable UK right. A similar approach is being applied to the assessment of reputation.

What if I have pending proceedings or injunctions in the UK?

Any actions or injunctions pending before the UK courts concerning EUTMs will continue after exit day, but with the EUTM being swapped out for their new comparable UKTM.

What if I have a pending EU trade mark?

If you have a pending EUTM Application pending, you will not be provided with a comparable UKTM. Instead, you will have 9 months from exit day to file a new UKTM Application, during which you will be entitled to claim the same filing date (or priority date) of the previously pending EUTM Application. You should note that you will not be notified of the need to refile, and will be required to pay all official fees to make a new filing.

Will someone else be able to register my pending EU trade mark in the UK?

Potentially, yes. As per above, you may be at risk of someone else registering your pending EUTM in the UK and should look to refile a UKTM application as soon as possible.

What should I do?

If you have an existing EUTM, the UK government provide you with a comparable UKTM on exit day, to be recorded on the UK register at no cost.

If you have a pending EUTM Application pending, you will not be provided with a comparable UKTM. Instead, you will have 9 months from exit day to file a new UKTM Application, during which you will be entitled to claim the same filing date (or priority date) of the previously pending EUTM Application You should note that you will not be notified of the need to refile, and will be required to pay all official fees to make a new filing.

With the uncertainty of Brexit and the implicit complexities associated with a mass-scale transfer, you should take a proactive approach in securing your IP interests in the UK. We recommend that you start planning ahead and are prepared to act if necessary, as soon as possible.

As solutions and/or any significant changes are only announced at the very last moment. we recommend that you closely follow and monitor the unfolding political and legal developments, as these will, no doubt, have a huge impact on the implementation of Trade Mark law and practice in the post-Brexit world.

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