There is no “one size fits all” approach to Brexit. We recommend discussing strategies with your usual advisor.
In Trade Mark terms, the only step to help insure against Brexit is to file a new UK Trade Mark application. With a possible Brexit date of 29 March 2019, we are now recommending that for new Trade Marks, UK applications should be filed in parallel with new EUTMs, especially for key marks. Also, for the most important marks in a portfolio which are registered at the EUIPO, it is worth considering filing afresh at the UKIPO. A new application will set a new five-year use period, and it gives an excellent opportunity to review and update specifications and ownership.
However, we also advise that if there is a smooth Brexit, this should lead to the continued protection of all existing EUTM registrations and applications in the UK: so if new UK Trade Mark applications are filed and all is well with Brexit, there could be duplication.
Background and Detail
On 23 June 2016, the UK voted by referendum voted, narrowly, to leave the EU (Brexit). On 19 March 2018, draft transition terms were published, which preserved the status quo for EUTMs until 31 December 2020. It also proposed a special nine-month priority period, for all EUTM applications pending at the Brexit date, for a UK application to be filed which tracks that pending EUTM. However, these terms were issued under the rubric “nothing is agreed until everything is agreed” and, in September 2018, it looks as if agreement is not likely. Therefore, the UK is scheduled to leave the EU without a deal, on 29 March 2019.
On 19 July 2018, it was confirmed in the UK Parliament that on Brexit day, all European Trade Mark Registrations will automatically “clone” into UK national rights, without official fees being paid.
On 24 September 2018, the UK Government’s Department for Business, Energy & Industrial Strategy published a Guidance Notice in the event of a no-deal scenario, which reiterated that statement for registrations, and also stated that EUTM applications which are still pending at the Brexit point will have a special nine-month period during which a UK application can be filed, mirroring that EUTM application and preserving all its details and dates. However, no formal comments have yet been made about the status of ongoing contentious issues at the EUIPO such as revocations, invalidations and oppositions. Possibly, contentious issues will be allowed to remain at the EUIPO until they are completed; and if the contentious matter relates to a pending application, the applicant might be able to file a “mirrored” UK national application within that nine-month period.
However, at time of writing (September 2018), there has been no legislation yet. A Guidance Notice can easily be changed, and a statement in Parliament can be amended, though that would be more controversial.
Therefore, due to the uncertainty around opposed EUTM applications in particular, and in the absence of an official statement on these, for caution, we now recommend that new EUTM applications are now filed at the UKIPO alongside the EUIPO filings. This is because marks filed in September and early October 2018 which meet no objections are likely to be registered before 29 March 2019; but as that date grows nearer, the chances of an application being still pending and possibly under opposition on 29 March 2019 increase.
As a corollary, we also recommend that when a new UK Trade Mark application is filed, an EUTM is filed alongside it. This is particularly because, after Brexit, it will no longer be possible to attack an EUTM on the basis of a UK national right. Therefore, it is prudent to file new marks at the EUIPO as well as at the UKIPO, in order to maintain the ability to challenge later EUTMs.
If you wish to discuss any Brexit-related issues, then please contact your usual advisor.