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UK: Trade marks – Brexit update

Last month we discussed the EU's position on what they would like to achieve from the Brexit negotiations. This month we focus on the practical implications of trade mark protection in the UK with a simple Q&A.

Will I need to file separate EU and UK applications after Brexit (possibly 2019)?

Almost certainly yes, unless the UK and the EU agree a compromise.

What about my existing EU registrations?

There has been much discussion as to whether existing EU registrations will be automatically transferred over to the UK register. The favoured approach at the moment is the so called 'Montenegro Option', where all registrations would be automatically transferred without the owner needing to pay additional fees. However, as there would be a cost implication to this, there is the strong possibility that the final agreement would mean existing registration owners would have to pay an additional fee and top up application to ensure that transfer to the UK Register did indeed happen. It is now prudent to consider refiling a stand-alone UK trade mark application to ensure coverage in the UK if this market is of strategic commercial importance.

What will happen if my EU application is pending or opposed when the UK officially exits the EU?

Again, there is no clarity on this issue, however it appears that the UK and the EU are considering allowing pending EU applications (including those under opposition) to remain with the EUIPO until registration.

What about agreements and licences involving EU marks?

Co-existence agreements, licences and other agreements having effect in the EU should be reviewed now as they may need amending. Also registration owners who have been involved in litigation relating to EU should also review their settlement agreements. New licences and agreements should be worded carefully to ensure that they are 'Brexit' ready.

Will I be able to rely on use of my trade mark in the EU to support a UK registration?

If a system for transfer of EU registrations onto the UK register does come into effect, there are difficulties for the UK concerning trade mark use. All newly created UK 'Ex EU' registrations would become vulnerable to a non-use cancellation action five years after the original EU registration date. Brand owners should consider their geographic use strategy in light of this issue.

Rebecca Dobson

Chapman IPKings Park House22 Kings Park RoadSouthampton SO15 2ATUnited KingdomTel: +44 (0) 23 80000 2022

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