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Brexit, trade marks and issues to consider (part 2)

Written by Samuel O'Toole on 14 March 2019

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In this series we are looking at Brexit and the implications it will have on trade marks in the UK. Notwithstanding what happened last night, as it stands the UK will leave the EU on 29 March 2019. For the record, 29 March is the 88th day in the year and the day in 1871 that Queen Vitoria opened the Royal Albert Hall, going forwards this date will have a huge impact on intellectual property in the UK.

The fact that the UK will leave the EU presents problems for trade marks. If a trade mark registration is not put to genuine use for a period of five years or more, the trade mark will become vulnerable to revocation from the register.

Brexit creates a couple of problems on this, for example if the holder of a EU trade mark (EUTM) only uses the trade mark in the UK, come five years post Brexit there may be an argument that the EUTM has not been put to genuine use in the UK.

The same is true in the opposite, if a EUTM holder is only using the trade mark in a Member State of the EU, and not the UK, come five years post Brexit (and presuming the EUTM is converted into a UK trade mark (UKTM) (see part 1)) there will be an argument that the UKTM has not been put to genuine use in the UK.

Both of the above situations create a risk of the EU/UKTM being susceptible to revocation from the registers – not a good situation to be in.

Luckily, the Government has come up with a solution. Article 54(5) of the draft withdrawal agreement provides that a EUTM which is converted to a UKTM will not be liable to revocation on the basis that it has not been put to genuine use in the UK before the end of the transition period. So, it may appear that our newly converted UKTMs are safe from revocation for lack of genuine use.

The Trade Marks (Amendment etc) (EU Exit) Regulations 2019 go on to provide that use of a ‘comparable EU mark’ in the EU should be treated as us in the context of revocation for lack of genuine use.

Going forwards, in the era of the unknown, it is suggested to review your trade mark portfolio and whether or not each trade mark has been put to genuine use. It would be advisable to put trade marks to genuine use and keep a record of this use – it may save you a headache in five years time!

If you need help with all things Brexit and IP why not get in contact with Lawdit where we would be delighted to assist you.

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