Brexit-proof your brand – a trade mark attorney’s view

Mike Vettese is director of trade marks at Murgitroyd
Mike Vettese is director of trade marks at Murgitroyd

On June 23, 2016, the UK public voted to leave the EU, and so began the complex and unprecedented untangling of the UK from the EU.

At this time, we have more questions than answers. However, one thing is clear; at 23:00 on March 29, 2019, the current system for EU trade mark (EUTM) registrations and applications will no longer apply to the UK.

What should we do to maintain protection? This is a good question and, at this time, there is no definitive answer. Clearly, the UK Government must make provisions for a cessation of rights.

The EU’s position is that EUTMs should automatically convert to a UK registration or application, with no fee or formalities. While this is just a wish list, it is difficult to see why the UK would not agree. Clearly, from the perspective of a holder of an EU registration or application, this would be the ideal scenario.

If holders of EU registrations or applications were forced to comply with formalities or incur fees to re-register their EU marks in the UK, this could be damaging to businesses on a global scale. That is, significant costs could be incurred should a holder own a substantial number of EU registrations, which is not uncommon.

It should also be noted that a cessation of EU trade mark rights in the UK affects not only holders in the UK, but also those throughout Europe and indeed globally.
The UK Government is likely to come under extreme pressure to make any transition as smooth and cost-effective as possible, given the global impact of this cessation of rights.

Take Action!
In practical terms, you should review your portfolio and speak with a
trade mark attorney if you have any doubts.
This is the strategy we recommend:
– For brand new trade marks,
and where the UK is an important
market for your business, we re-
commend seeking UK national protection in parallel with protection at the EU level.
– For existing registrations, consider filing UK national trade mark applications to protect any important brands that are protected solely at the EU level. The benefit here is that those brands will then be protected in the UK
regardless of the action taken by the UK Government. UK trade mark registrations are quick and generally cost-effective, and filing now will give you certainty and peace of mind moving forward.
– If you file applications for International registration under the Madrid Protocol, consider designating the UK and the EU. Also consider basing the international registration on a UK application or registration.
– If you have UK registrations and EUTMs, do not let the UK registrations lapse in favour of the EUTM. Renewal costs in the UK are low.
– Review existing agreements and licences to ensure that they
will remain in force regardless of Brexit.
– Consider how your trade marks are used in the EU now and gather evidence of use that would be sufficient to defeat an attack on the basis of non-use.
– If you have .eu domain names, consider registering in other TLDs, such as

Mike Vettese is director of trade marks at Murgitroyd