Brexit - Trademarks in a no deal scenario

October 1, 2018

In our last edition we looked at the essential element of working with your employees in relation to settled status applications. This update coincides with the governments series of advisory documents in the case of a no-deal Brexit scenario. Trademarks is the specific topic this time.

Those of you who have heard me give talks on how businesses can prepare for Brexit, will have heard me say that most Trademark specialists are indicating that they expect EU registered trademarks to be automatically transferred over to cover the UK post Brexit. Let's see what the governments paper says in relation to a no-deal Brexit scenario.

Setting the scene

Your trademarks and registered designs could be issued by the EU Intellectual Property Office or through the Madrid and Hague systems. The first thing to do, working with your trademark attorney is to establish exactly what intellectual property you hold and where and how it is registered. Armed with this information you will be able to work out which registrations you need to review.

What the government are saying about Trademarks in a no-deal Brexit scenario.

The government are trying to be very reassuring in this issue. They state in their paper that all intellectual property rights in existing EU registered trademarks and designs will be protected and enforceable in the UK. This will mean providing an equivalent mark in the UK. My advice would be to discuss this with your Trademark Attorney to make sure that there are no gaps in your protection in the switch. The new UK right mark granted to you as an existing EU trademark holder will come into effect on the date of the UK's exit from the EU. Remember that in the case of a no-deal scenario there is no transition period post March 29th 2019. Although the government are promising that there will be no administrative burden on companies that this change would apply to, it would be prudent to nominate someone internally to be responsible for monitoring the situation and build in time to their role to do so.

If you have an application in for an EU registered trademark or design that is still ongoing (i.e. applied for but not yet granted) you will need to refile the application with the Intellectual Property Office (IPO) in the UK. This will be an equivalent right in the UK as was being applied for in the EU. The timeframe for doing this is 9 months from the date of the UK's exit from the EU. The date of application for priority purposes will be the same though as the original EU application. You will have to pay the costs of refiling with the IPO though, so allow for this in your budgeting! Also please note that if you are in the application stage you will not be notified about this and will need to proactively make your own decision to refile for UK protection.

The government also state that they are working on a similar system for those companies who have filed with the Madrid and Hague systems.

This is only intended as a quick overview of the situation that a no-deal exit from the EU would bring. If you are looking a reliable Trade Mark attorney for specialist help I can suggest contacting Claire Freeman of Dummett Copp.