Unless you’ve been living under a rock, you’re aware that on Thursday, June 23, 2016, the United Kingdom voted to exit the European Union. What does Brexit mean for trademarks?
In the short run, the answer is “nothing.” The UK-EU split won’t actually take effect until 2018 at the earliest.
In the longer term, it depends on how the Brexit occurs. Anything in this blog post is subject to change, depending on how the actual UK-EU split is negotiated. For example, it’s possible that the UK will “leave” the EU in some respects, but will remain a party to EU trademark treaties.
The World Trademark Review summarized the status quo as follows:
Briefly, in current terms, a UK exit would mean that the protection offered by EU trademark and Community registered designs would no longer extend to the UK – requiring those without a UK registration and wishing to continue their coverage in the UK to seek a national registration. An exit would also mean that UK-based practitioners would no longer be able to represent clients before the EU Intellectual Property Office, while UK courts would no longer be able to hear trademark infringement disputes based on EU trademarks. The legal environment could also become more complicated, with UK and EU trademark and design law potentially diverging.
Let’s take those three sentences one at a time.
Briefly, in current terms, a UK exit would mean that the protection offered by EU trademark and Community registered designs would no longer extend to the UK – requiring those without a UK registration and wishing to continue their coverage in the UK to seek a national registration.
Currently, a trademark registered with the European Union Intellectual Property Office (EUIPO) enjoys legal protection in all 28 (current) EU member countries. Goods and services that are available in more than one of the EU countries are eligible for EUIPO trademark protection. As of this writing, that includes the UK.
If the UK fully and finally leaves the EU, this would no longer be the case. An EUIPO trademark registration would offer no protection in the UK, so you’d have to register separately in the UK. In addition, companies doing business in the UK and only one EU member country would no longer be eligible for EUIPO trademark registrations. I would assume that current registrations based on use of the mark in the UK and one other EU country would remain in force, but that may not end up being the case.
An exit would also mean that UK-based practitioners would no longer be able to represent clients before the EU Intellectual Property Office, while UK courts would no longer be able to hear trademark infringement disputes based on EU trademarks.
This means that trademark owners who currently deal with UK attorneys to handle their EU trademark matters will have to find legal representation in one of the remaining EU member states, while the reverse is also true: if you have a dispute regarding a trademark in the UK, you won’t be able to rely on legal representation based in another EU country.
To put it more simply: if you do business in the UK and in the EU, you’ll have to deal with more lawyers.
The legal environment could also become more complicated, with UK and EU trademark and design law potentially diverging.
This is a more subtle point, but it may be the most significant. One of the things that the EU does is to normalize laws, such as intellectual property laws, across borders. It’s outside the scope of this blog post to consider whether or not that’s a good thing. But should the UK-EU divorce become final, that will no longer be the case with respect to those two entities. A trademark ruling in Brussels will not longer be legally binding in the UK, and vice versa. So, over time, companies may discover that these two sets of laws will evolve in different directions, leading to additional cost and confusion.
There are other issues relevant to trademark owners. The Brexit will presumably have a significant impact on imports and exports between the UK and the EU. One might assume this will result in fewer EU goods being imported into the UK, impacting the value of trademarks and their related goods and services. Arty Rajenda at Rouse Legal stated, “There is also a risk that less cooperation between border force authorities in EU member states could lead to a rise in counterfeiting in the UK.”
In summary, while there’s no need to panic, companies doing business in the UK should start to think about when is the right time to start filing separate UK trademark applications. Watch this space for more updates on this evolving issue.
