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Implications of Brexit on Trade Mark Owners

Malcolm Campbell ||

On the morning of Friday 24 May 2019, on the front steps of 10 Downing Street, Theresa May announced her resignation as Prime Minister of the United Kingdom.  Brexit has struck again, and has taken its next political victim.

Following a referendum held on 23 June 2016, the United Kingdom was due to exit the European Union (‘EU’) on 29 March 2019.  However, the withdrawal agreement reached between the European Union and UK has now been rejected three times by members of the UK’s Parliament, and the leaders of the European Union have granted a six-month extension until 31 October 2019.

There is speculation that the UK could still the leave the EU later in the year, with a “no-deal” Brexit.
Whilst you may not think that the effects of Brexit are likely to reach the shores of Australia some 15,000 kilometres away, or that they would have the potential for lasting impact – the reality is that a “no-deal” Brexit would impact Australian trade mark owners who have either secured a registration, or have a pending application for a trade mark in the EU (which includes protection for the mark in all 27-member states, including the UK).

Up until recently there had been significant uncertainty surrounding the fate of trade mark owners post-Brexit, although regulations are beginning to take shape, and the actions of the UK government and the UK Intellectual Property Office look to be removing some of this uncertainty.

What implications would a no-deal Brexit have on the owners of registered trade marks in the UK?

If a “no-deal” Brexit does take place, the UK will no longer be covered by EU trade marks and community registered designs.  However, the UK government has proposed to put in place the following mechanisms in order to ensure the continued protection of trade mark owner intellectual property rights within the UK:

  1. New “comparable” trade marks in the UK: For every EU trade mark that is registered post-Brexit, the UK government intends to automatically create a UK comparable trade mark.  The comparable trade mark will keep the same filing date of the EU trade mark, will maintain its EU registration number and will be easily identified by the prefix ‘UK009’.
  2. Pending EU trade marks: Those who have a pending trade mark at the time the UK leaves the EU,  will not be automatically given a “comparable UK trade mark application’.  With this said, the UK government does intend to provide such applicants with a 9-month priority period from Brexit during which they can file new UK trade mark applications.
  3. International trade marks designating the EU: The UK government has provided assurances that there will be continuity of protection within the UK for international trade marks which currently designate the EU.  Discussions between the UK and the World Intellectual Property Office (WIPO) regarding how to achieve this are ongoing.
  4. Pending EU oppositions and cancellation actions: Existing disputes at the European Union Intellectual Property Office (EUIPO) will not automatically give rise to an equivalent dispute in respect of the equivalent UK right, whether that is a UK comparable trade mark or registered design, or a new UK trade mark application or registered design application filed within the 9-month priority period granted in respect of pending EU rights.

Owners of trade marks in the EU should keep themselves up to date and closely monitor the situation.  Coleman Greig would even suggest conducting audits of existing protections, enforcements, and agreements concerning the UK, so as to be in a better position to make informed decisions when the time comes to do so.

If you have a query relating to any of the information in this article, or you would like to speak with a lawyer in Coleman Greig’s Commercial Advice team with regard to your own trade marks, please don’t hesitate to get in touch.


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