You Create. We Protect.

Bracing for Brexit- What U.S. Trademark Owners Need to Know

On Behalf of | Jul 20, 2016 | Uncategorized

It is still not clear what all of the legal consequences will be from “Brexit,” last month’s British referendum vote to leave the European Union (EU). Though the UK departure from the EU is not going to occur until 2018 or later, U.S. owners should begin thinking about how they can best continue protection of their trademarks in the UK.

Until the UK leaves the EU, trademark rights in the EU still apply in the UK. When the UK eventually exits, there will be some kind of process for continuing protection in the UK with the preservation of the European Trademark’s (EUTM) priority rights. The transition process may occur in various ways, ranging from UK legislation deeming an ETUM registration to cover the UK, an administrative re-registration of an EUTM for the UK by a simple form or action, or converting an EUTM to a UK national trademark with reexamination in the UK and other possible action.

It is still not clear what all of the legal consequences will be from “Brexit,” last month’s British referendum vote to leave the European Union (EU). Though the UK departure from the EU is not going to occur until 2018 or later, U.S. owners should begin thinking about how they can best continue protection of their trademarks in the UK.

Until the UK leaves the EU, trademark rights in the EU still apply in the UK. When the UK eventually exits, there will be some kind of process for continuing protection in the UK with the preservation of the European Trademark’s (EUTM) priority rights. The transition process may occur in various ways, ranging from UK legislation deeming an ETUM registration to cover the UK, an administrative re-registration of an EUTM for the UK by a simple form or action, or converting an EUTM to a UK national trademark with reexamination in the UK and other possible action.

For existing trademarks, it is business as usual. Applicants with pending EUTM and UK applications should keep prosecuting them, and EUTM and UK registrations should be renewed by their deadlines. Renewal is usually easy and fairly inexpensive. For a EUTM registration due for renewal soon, be sure to document how and where the mark is being used in the EU. The trend in the EU is to require regional or pan-EU level use, rather than just national use. Within the next few years, use in the UK will no longer be sufficient to prove use in the EU, so use in other EU countries will be increasingly important.

But for new trademarks filed through the Madrid Protocol, designate the UK separately from the EU and you can avoid the eventual transition process, whatever is, altogether. If you file directly in Europe, consider filing a UK national trademark application and an EUTM. Likewise, for EUTM applications filed in the last 6 months, filing a UK national trademark application will have the benefit of the EUTM filing date.

Other Tips: Trademark owners who own a .eu domain should also try to secure a .co.uk or a .com domain name. And if you have a license, distributor or other agreement that covers the EU or the UK, be sure to review it. It may need to be amended to specifically address the UK’s exit and to cover the entry and exit of other EU members.

The strategy you choose depends on your particular trademarks, the nature of your business and the significance of the UK market. If you have questions about protecting your trademarks or IP agreements in the UK and EU, please contact one of Hovey Williams LLP‘s trademark attorneys.

FindLaw Network