You do business in the UK (or you intend to do so). Then you also have a brand: after all, your customers need to be able to identify your products and/or services. As an entrepreneur, you have therefore been careful and have sought protection for your trade mark by registering it, as a (national) UK trade mark or as a EU trade mark. Do you have to worry about the course of the Brexit saga now that the finale is very close?

If there is one thing that is certain with regard to the Brexit, it is that we can’t be certain of anything. But what are the scenarios before us today with regard to trade mark law?

My mark is a UK trade mark

If you have a UK trade mark (already registered or applied for), then nothing will change anyway. Local legislation (the Trade Marks Act 1994 and the Trade Mark Rules 2008) determines the rules of the game, and in the United Kingdom the Intellectual Property Office (IPO) is responsible for their implementation.

My mark is a EU trade mark

A completely different story in case of a EU trade mark: after all, this is a protection system based on the European Trade Mark Regulation, which creates a single right within all Member States. When the United Kingdom leaves the EU, this EU trade mark will of course only be valid in the remaining Member States.

Can a ‘right’ that I have be taken away because the United Kingdom is leaving the EU? The answer is an unequivocal ‘no’: after all, the European Convention on Human Rights confines the ability of states to restrict the ownership of natural or legal persons. The Court of Justice has already confirmed in a number of cases that a EU trade mark can be regarded as property under the ECHR.

On purely legal grounds, the United Kingdom and the EU, with or without a deal, will therefore have to find a solution for the EU trade marks. But they will also do so for economic reasons: in the United Kingdom alone, companies that are highly dependent on their trade marks represent 38.4% of GDP!

With a negotiated deal

The Withdrawal Agreement that was negotiated between the EU and the United Kingdom is clear: if you have a registered EU trade mark, you will be granted a similar (i.e. with an equal sign for the same goods and services) UK trade mark after the Brexit.

And although you get thus 2 trade marks, their further development is very synchronous: the UK trade mark has the same priority date and will have to be renewed on the same date as the EU trade mark.

In addition, a transition period will apply until 31 December 2020: EU trade marks that were not yet registered at the time of the Brexit, but that are registered before the end of the transition period, will also give rise to the creation of this corresponding UK trade mark.

If the EU trade mark is later withdrawn or declared invalid, based on a procedure that was pending before the end of the transition period, the corresponding UK trade mark will also be withdrawn or declared invalid. However, the United Kingdom is granted the right not to revoke or declare invalid the trade mark in question if the basis for revocation or declaration of invalidity does not apply in the United Kingdom.

In addition, it is clearly stated that there are no administrative formalities to be completed, nor is there any fee to be paid.

The divorce treaty therefore provides for a wrinkle-free division of your EU trade mark into a EU trade mark as before, and a UK trade mark.

And what about a hard Brexit?

The UK Government has taken clear positions on its intentions in relation to trade mark law. It is important to note that, unlike the divorce agreement, this is an intention that has yet to be worked out.

In any case, the principle is that, at the time of the Brexit, the IPO will create a similar UK trade mark for each registered EU trade mark. No fees would be charged for this, and the timeline (priority date and time of renewal) would remain the same as that of the EU trade mark. All this would be done with only “limited administrative obligations”, although it is not clear what that might mean.

However, the main difference in case of a hard Brexit is the handling of the EU trade mark applications that are still pending at the time of the Brexit, which are about 85,000. As there is no transition period, interested potential trade mark owners will have to re-apply for a UK trade mark. It is the intention that if this happens within a period of 9 months after the Brexit, the same priority date will apply as for the EU trade mark. In this case, however, fees will have to be paid, just as in the case of a regular application for a UK trade mark.

Conclusion

First, UK trade mark owners don’t have to worry.

In principle, the same applies to holders of a EU trade mark that has already been registered: regardless of how Brexit will proceed, all 1.2 million EU trade marks will automatically give rise to the creation of a similar UK trade mark.

However, if you have an application underway for a EU trade mark, then you are advised to be alert in the case of a hard Brexit: if you are interested in the protection of your trade mark within the United Kingdom, you will have to take the initiative to submit a new application yourself.

In any case, our trade mark specialists are ready to advise and assist you through this Brexit maze! Questions can always be asked to hallo@dejuristen.be.

Written by Kris Seyen, partner deJuristen