On 23 June 2016, the British people opposed further membership of the EU. Currently, it looks as if the United Kingdom will leave the EU without any agreement as from 31 October 2019. If this happens, it will also have a considerable impact on registered intellectual property rights, including EU Trademarks.

The (EU) trademark

A trademark is a sign (word, logo, slogan, colour, shape, etc.) a company uses to distinguish its goods and/or services from those of another company within the course of trade.

In order to have a valid trademark right, one must register this sign for a specific territory (Benelux, EU or international) and this for specific classes of goods and services. The EU Trademark offers the advantage of enjoying exclusive protection in the 28 member states of the EU by means of a single trademark registration.

The Union Trademark is therefore an indispensable instrument to safeguard the interests and investments of your company when you consider to expand your activities outside the Benelux. Moreover, the cost of registration is relatively low.



Consequences of the Brexit

But what about the validity of the EU Trademark after the Brexit? Will it still be possible to enforce your exclusive trademark rights in the UK? After all, a 'no-deal' also implies the absence of any agreement between the EU and the UK on the fate of the EU Trademark.

The problem is twofold, namely (i) the situation in which you already own a valid EU Trademark registration and (ii) the situation in which your company intends to register an EU Trademark.

If your company already possesses an EU Trademark today, this trademark will no longer be valid in the UK after the Brexit. In order to remedy this shortcoming, the British authorities now promise equivalent trademark protection under British national law.

This protection will apply as from the date the Brexit becomes effective. However, it will not be granted automatically. Anyone who wishes to enjoy trademark protection in the UK on the basis of a previously registered EU Trademark will therefore have to file a national trademark application in the United Kingdom within the term set forth by the UK. The national registration procedure will have to be completed and the related fees will be due. The UK does, however, guarantee that the new national UK trademark will be acquired while maintaining the priority date of the earlier EU Trademark. Furthermore, the UK government promises that all owners of a valid EU Trademark will be invited to opt for this national registration.

Consequently, we advise to duly consider the importance for your business of further trademark protection in the UK.

If your company is currently active in the United Kingdom or if you intend to expand your company's activities to the UK in the near future, we advise to apply for the aforementioned national registration. If, on the other hand, you are not active in the UK and you do not have this ambition in the near future, then it may not make sense to invest in such national British trademark registration. In that event it would be recommended to opt out and maintain your EU Trademark registration only for the other 27 Member States.

If your company does not yet own an EU Trademark, but you intend to apply for it (e.g. because of a planned expansion of your activities to the UK), or if your trademark application is pending and the opposition period only expires after 31 October 2019, then the situation is somehow different.

For example, the owners of a pending EU trademark application will, upon registration of their EU Trademark, not automatically be invited to convert it into a national British registration. If your EU Trademark is not registered before 31 October 2019, you will have to take the initiative yourself to apply for a national British registration in time. 

The question also arises as to whether there is any point in applying for registration of an EU Trademark before 31 October 2019. There are two plausible reasons pro such application, namely:
 

1. If you wish to obtain registration of an EU Trademark in the near future in order to prevent its use by third parties. But only if such application cannot be qualified as a ‘bad faith’ application;
    
2. Because the UK foresees that the equivalent UK trade mark right will be granted with a "minimum administrative burden". We can therefore assume that it will be (slightly) easier to convert an EU Trademark into a national British trademark than to apply for a national British trademark.

We are following the issue closely.