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Intellectual Property Alert >> Implications of Brexit on Trademarks in the EU

July 7, 2016

The United Kingdom’s vote on June 23, 2016 to withdraw from the European Union has left many issues in flux, including the rights of owners of European Union Trademark registrations (EUTMs), formerly Community Trade Marks (CTMs). While details of the separation have yet to take shape, below are some points to keep in mind:

  • The United Kingdom’s official exit from the EU will take at least two years. As of today, an EUTM still includes protection in the United Kingdom. Changes in EUTM coverage will not occur immediately and are not likely to change during the United Kingdom’s period of negotiation for separation.
  • Our colleagues in the United Kingdom anticipate that owners of an EUTM will be able to convert the UK component of their registration to a UK national registration or otherwise re-register in the United Kingdom without a loss in priority. However, there has been no official guidance as of yet, and it is likely to take quite some time for the process to be determined.
  • The general recommendation is to continue to file EU applications as normal until transitional procedures are decided. However, businesses that have an EU presence solely in the United Kingdom face issues of particular importance. Those companies may want to consider filing national applications in the United Kingdom sooner rather than later to avoid possible gaps in protection based on a variety of factors which we are available to discuss.
  • For businesses that solely have a presence in the United Kingdom, an EU registration may become vulnerable to cancellation by a third party for non-use in the EU once the United Kingdom withdraws. Strategies to address this issue can also be discussed.

Davis & Gilbert will distribute further updates as we learn more about the full impact of the United Kingdom’s withdrawal on trademark rights.

Bottom Line

Even though the United Kingdom’s exit from the EU will not take effect for quite some time, trademark protection will ultimately be impacted. Therefore, while immediate action may not be necessary, we recommend reviewing your UK and EU business presence and trademark portfolio with counsel to determine whether any actions should be taken in the interim.