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Brexit and trade marks- your questions answered

Written by Ellis Sweetenham on 01 July 2016

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Following the nation’s decision on the 23rd June that the UK will no longer be a member of the European Union, there has been an influx of questions from concerned businesses regarding the status of their IP, especially their registered trade marks.

Here these questions will be answered.

First thing to stress is that nothing will change overnight.

The UK and the EU will go into negotiations that will take at least two years. Therefore, for this period, nothing will change as the UK still will be a member of the EU. Therefore, there is nothing to do immediately but it is important that you are aware of what will come later on and any steps that you may then have to take.

Below are some of the most frequently asked questions and clear answers to put your mind at rest.

Should owners of registered EU trade marks make an application to the UK IPO?

Yes!

When the UK officially leave the EU, any EU trade mark will then have no protection within the UK. The best step to combat this, is to register your mark as a UK registered trade mark. You will then have secure protection in the UK as well as the 27 remaining member states of the EU. This application needs to be submitted to the UK Intellectual Property Office. For more guidance contact Lawdit’s Intellectual Property Department.

What should I do about new applications- EU or just UK registration?

An application to the EU Intellectual Property Office for a registered EU trade mark was a one stop shop to gain protection in 28 countries including the UK. Even if your business only traded in the UK, it gave the option of further expansion without any additional applications. However, after negotiations this will no longer be the case. You may therefore be undecided where you should register your trade mark. If your main jurisdiction of trade is the UK and there is a low chance of future Europe expansion, then your best choice would be just a UK application. However, if you would look to use your mark within the EU not including the UK, it is essential you make an EU application as well as it secures protection of your brand and is still a cost effective and time saving system that gives wide spread protection with one application.

Will my EU trade mark become invalid if its only use is in the UK and not in another member state?

In short, yes!

If your EU trade mark was only actively used in the UK, then when it is removed from the union, you need to ensure that your mark is still being actively used in an EU member state otherwise it will be removed for non-use. While there is still a long period before the UK will no longer be a member of the EU, if you need to expand your business beyond the UK in this period to ensure your EU trade mark is being used properly this may be something to think abut now.

My trade mark is to be renewed in the next two years- what should I do?

The best step to take is to renew it as normal. First of all because the UK will still be a member of the EU for the next two years, you will need to have renewed your trade mark when it is required to still have protection during this period. In addition, a EU trade mark is a good asset to have, whether the UK is a part of it or not. Brexit is not a reason to lose this protection.

 

For any more information or guidance, contact our Intellectual Property department at Lawdit Solicitors.

If you'd like to know more about this article please send an email to Ellis Sweetenham quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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