There are numerous ‘what if’ type questions flying around at the moment, so here’s another: what happens to EU trade marks if the UK decides to leave the EU?
Guess what? The answer is that nobody really knows, which sums up most of the current debate on the subject of Brexit generally! What is clear, however, is that any solution will inevitably be heavily negotiated and involve a lengthy transitional period. The enormity of the conversion will almost certainly call for an automatic system to be implemented, such as the automatic division of existing EU trade marks into both EU trade marks and UK trade marks. Alternatively, it could be that existing EU trade marks continue to apply in the UK until they reach their renewal date, at which point proprietors will have to renew their EU trade marks and apply for new UK trade marks simultaneously.
What we also know is that if the UK does vote to leave the EU, new EU trade mark applications will no longer cover the UK. As a result, applicants who require protection in both the UK and the EU will have to apply for both an EU trade mark and a UK trade mark, increasing both the complexity and cost of registration.
There is historical precedent. When the partition of Ireland took place in 1921, a similar decision had to be made. On this occasion, legislation was put in place permitting proprietors of existing UK trade marks to re-register their UK trade marks as Irish trade marks. The problem with this approach was that it was not an automatic process. Therefore, not only was the onus on the proprietors to ensure that they completed the re-registration, but the UK Intellectual Property Office was also put under extensive pressure to deal with the increase in registrations.
Is there anything that can be done in the meantime? In terms of making hard and fast decisions: no; but there are steps that can be taken by EU trade mark proprietors in anticipation of the potential change. This includes identifying the markets in which trade marks are used, performing an audit of existing trade marks and allocating a sufficient budget to cover the likely work involved, should Boris get his way!
Murrell Associates are on hand to assist trade mark proprietors in preparing for this potential change.
If you wish to discuss any of the issues raised in this article please contact Rebecca Anforth, on 01872 226999 or firstname.lastname@example.org.
The information provided in this article is for general information purposes only and does not constitute legal or other professional advice and cannot be relied upon as such. Any law quoted in this article is correct as at May 2016. Appropriate legal advice should be sought for specific circumstances before any action is taken. Copyright © Murrell Associates Limited, May 2016.