Trade Marks - Practical effects of Brexit

Should I be filing separate UK trade mark applications now?

The UK’s stated position is that, in any scenario, it will seek to ensure that there is no loss of rights for owners of EU trade marks.  Accordingly, we do not advise filing separate UK applications in addition to new EU applications and/or existing EU Registrations, except where, for example, those marks are of the most strategic importance. 

"If you would like tailored advice in respect of a particular mark and/or a particular set of circumstances, please let us know."

It is not yet known whether UK marks transformed from existing EU Registrations will enjoy a new “grace period” for the purposes of putting the mark to genuine use. 

If not, owners of marks which are protected and used in the EU but which are not yet used in the UK but where the UK is still of commercial interest might want to consider filing in the UK in the short term in order to safeguard the position in the UK.  Filing without any intention to use could of course run into difficulties as regards bona fides.

However, if there is a genuine intention to use the mark in the UK in the future, filing a new UK application would be warranted.   Again, we would be happy to advise in relation to any specific mark or set of circumstances.  

Seniority

Brand owners may wish to consider reviewing their renewal strategy with respect to UK marks for which seniority claims have been made at the EUIPO.  Rights-holders who already own parallel UK and EU Registrations for the same trade mark and were previously thinking of allowing the UK Registration to lapse where a seniority claim has been made, would be well advised now to continue to renew that UK Registration for the time being.

Representation before EUIPO

"Abel & Imray is a European IP firm and we will continue to be a European IP firm post-Brexit."

No matter what form Brexit takes, we have taken steps to ensure that we will continue to represent clients in EU trade mark and design matters before the EUIPO.  As clients will already know, representation before the European Patent Office (the “EPO”) will be unaffected by Brexit.  

Agreements and licences involving EU marks

Many clients will have trade mark agreements, including co-existence agreements, and/or licences having effect in the EU.  Similarly, clients may have been involved in litigation relating to EU marks which gave rise to court orders and/or settlement agreements having effect in the EU.

It is advisable to review such agreements, orders and licences to determine whether they now need to be amended and/or supplemented to continue to give effect to the will of the parties and/or the courts.  If you have any queries in this respect, please do not hesitate to let us know.  

We also recommend that any agreements or licences made from now on are drafted in such a way as to cover not only Brexit but also the possibility of new member states acceding to the EU and/or other existing member states leaving in the future.

If you have any questions relating to Brexit, please contact your usual Abel & Imray attorney, or email brexit@abelimray.com