In June 2016 the UK voters decided in a referendum to leave the European Union. (Also known as “Brexit.”) The process of the UK’s withdrawal from the European Union formally started on 29 March 2017. Since then there has been much speculation on the future of many intellectual property laws following the decision that the UK should leave the EU.
In general, the UK system for protecting trade mark rights is not affected by the decision to leave the EU. The situation is much more complicated when it comes to EU Trade Marks (EUTM). So far, as the UK still remains the member of the EU, all EUTM continue to be valid in the UK. EU laws will continue to apply in the UK until the UK officially leaves the EU. Therefore, the EU Trade Mark Regulation (EU) 207/2009 (as amended by Regulation (EU) 2015/2424) remain in full force and effect. This, however, may change in March 2019 when the UK will ultimately leave the EU, in accordance with Article 50 of the Treaty on European Union.
The negotiations between the UK government and the EU are in the early stage so far and the outcome remains unclear. Thus, it is difficult to predict now the legal environment in the years to come. Both parties are exploring various options. There are indications that once the UK formally leaves the EU, newly filed EUTMs will no longer cover the territory of the UK. This could, however, be subject to special extension arrangement that is made as part of the Brexit deal.
The UK government has a good track record for ensuring that changes in trade mark legislation contain appropriate transitional provisions to help brand owners and other IP proprietors to adjust to any new regime. Therefore, a mechanism will undoubtedly be provided to allow the continued protection or extension of pre-existing EUTMs to the UK post-Brexit. This should include maintaining the original filing and priority dates, and/or any relevant seniority claim.
The negotiations on the UK’s orderly withdrawal from the EU must be completed within a period of two years. If no agreement is reached within this period, the EU law will automatically cease to apply to the UK. As EUTMs will no longer cover the territory of the UK from the date on which the UK formally leaves the EU, it will probably be necessary to file UK national applications, unless some special arrangement is set up whereby an EUTM can be extended to the UK. Until then, i.e. until March 2019, filing a national UK mark remains, nevertheless, a reasonable option for those who are active on the British market. It will certainly make things much easier in the years to come, when there might be same chaos associated with the transition period and when the whole registration process may be significantly delayed due to the large number of applicants to the UKIPO.
It should be remembered that the negotiation process is still in its early stages (the first round took place on 19 June). As for now, neither the EUIPO nor the UKIPO has made any official statement in relation to the UK’s decision to leave the EU. Thus, the situation has to be monitor closely.
Piotr Sliwinski is an Intellectual Property Associate based in the Warsaw, Poland office of LegalForce RAPC Worldwide. He graduated in law from the Cardinal Stefan Wyszynski University in Warsaw and in sociology from the University of Warsaw. In 2016 he earned his Master of Laws at the University of Bonn in Germany. Moreover, in recognition of his academic achievements he had been sponsored two semesters at the Goethe University in Frankfurt am Main. Piotr is fluent in Polish, English, and German. He also speaks Russian.