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Brexit – EU Trade Marks and Protection in the UK
27 June 2016 by Steven Wake

As you have no doubt heard, on 23 June 2016 the UK voted to leave the EU. It will take some considerable time before this happens - we estimate at least two years from June 2016. So what impact does this have on EU trade marks and the protection of trade marks in the UK?

No immediate action necessary:

In the short term no immediate action is needed in relation to existing EU trade mark registrations and applications which continue to have effect in the UK. Once the UK has eventually left the EU, any EU trade mark filed thereafter will not afford protection in the UK. At that time trade mark protection for the UK will need to be sought by way of UK national trade mark applications (or by designations of the UK under International Registrations). However, that is still a long time away.

National UK protection for important marks and UK-focused businesses?

As you can imagine, the terms of the UK exit from the EU will be the subject of complex negotiations between the UK and the remaining EU member states. In respect of EU trade marks we fully expect there to be an option to "convert" UK protection under an EU trade mark to UK national protection in due course, so that there is continuity of protection in the UK. Exactly how this will come about is not yet clear. Thus, in the meantime, if you are a UK-based business or the UK is an important territory for you and you would like to obtain protection for "Europe", then you may wish to consider seeking UK national trade mark protection in addition to filing for the EU, at least until such time as any conversion process for EU trade marks is clarified. While such additional UK national filing may, in the long term, prove superfluous when a process is in place to convert the rights under an EU trade mark to UK national rights, at present the position is unclear, and it is the safest option for ensuring that protection for the UK is in place.

We are offering special rates for simultaneous UK and EU trade mark filings - please do not hesitate to contact us if this is of interest.

With qualified European attorneys across our offices, including Munich, Forresters is able to continue handling your EU trade mark needs, as well as handling UK national matters, of course.

Summary

In summary, our advice at this time is not to take any special action in relation to existing EU trade mark registrations or applications as a result of the Brexit vote, but to continue with those registrations and applications as usual. However, if your business is UK-focussed and for any marks which are of particular importance in the UK, you should consider filing for UK national protection as well as EU protection, at least until the position concerning the "conversion" of rights under EU trade marks to UK national protection is clarified.