What Will Happen to my EU Trade Mark When we Leave the EU?

I know that everyone is sick to death of hearing the word ‘Brexit’ and believe me, trying to write an interesting blog about it is one of my biggest challenges to date but bear with me! As a small business owner, this is absolutely something you need to know if you have or are thinking about registering an EU trade mark.

So, on 29 March 2019, the UK is (whether our parliamentarians manage to secure a deal or not), going to make its dramatic depart from the European Union and depending on where you stand, that may make you dance with joy or positively furious – but we won’t get into that…

If the UK and the EU manage to agree a Withdrawal Agreement, it will include provisions for an implementation period to the end of 2020, during which EU law will continue to apply in the UK. During the implementation period, the future of the EU/UK relationship will be negotiated and included in this, will be what happens to EU trade marks once the UK is no longer in the EU. Exciting stuff, right?!

However, if we end up with a ‘no deal’ or ‘hard Brexit’ situation, EU law will cease to apply in and to the UK on 29 March 2019. This blog will cover what will happen to EU trade marks when the UK is no longer in the EU, in the event that a Withdrawal Agreement has not been secured.

Trade marks in the event of a 'no deal' Brexit

If you currently have or are thinking about registering an EU trade mark, you are exactly where you need to be (reading me trying to force the fun out of Brexit). The government has said that the property rights in all existing registered EU trade marks will continue to be protected and enforceable in the UK by providing an equivalent UK trade mark.

If you have submitted an EU trade mark application and that application is ongoing (i.e. your mark is not yet registered) at the point of the UK’s exit from the EU, here’s what you need to know:

• you will have a period of nine months from the date of exit to apply for a UK trade mark with the same protection;
• you will be able to use the normal application process for registering trade marks in the UK.
• if your application is successful, the UK trade mark application will have the same date as the date when your EU application was filed for priority purposes (as trade mark applications are dealt with on a first come first serve basis!);
• unfortunately, you will need to meet the cost of refiling your application in the UK and the UK application fees will apply (so get your EU trade mark registered before the 29 March 2019 to avoid extra cost!).

To summarise, EU trade mark holders and applicants should be aware of the following implications which will apply in the event of a ‘no deal’ Brexit:

• Existing registered EU trade marks will continue to be valid in EU member states.
• Protection of existing registered EU trade marks in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden.
• Right holders will be notified when the new UK right is granted. Any business that does not want a new UK equivalent right can opt out.
• As explained in more detail above, applicants with pending applications for an EU trade mark will not be notified after exit and will need to consider whether to refile for a UK trade mark i.e. get your trade mark registered before 19 March 2019!
• UK applicants will continue to be able to apply for protection in the EU through an EU trade mark as they do currently.

This blog explains what will happen in the event that the UK and the EU fails to reach an Agreement by 29 March 2019. It is important to note that if they do reach an agreement and we enter into an implementation period as explained above, it is likely that a similar process will be put in place, but until that is announced, EU trade marks will continue to cover the territory of the UK.

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