EU trade marks and Brexit - Known Unknowns!

This article was written on 11 September 2019. The content was relevant at the time of writing, but may have since changed. For our latest Brexit updates, please access our Brexit Hub.

These are questions which you can address with your clients who have interests in the UK or the EU.

1. Is a right protected in the European Union only by an EUTM? If so, an automatic UK ‘cloned’ right will be created. If new protection is needed, then consider if new applications should be filed both in the EU and in the UK.
    

2. Is your company party to an agreement which extends to the European Union? If so, is it intended that this agreement should also cover the United Kingdom? Will an addendum to the agreement or a new agreement be needed?
    

3. Does your company have an EU trade mark but use is only made in the UK?  If so, such use will no longer validate the EU registration at some point in the future.  Consider starting use in another mainland EU country.
    

4. Alternatively does your company have an EU registration with use in a Member State that is not the United Kingdom, but you intend to make use of the mark in the UK? If so, there are issues raised for non-use cancellation of such a ‘cloned’ UK registration.
    

5. Numerous EU registrations contain errors in the English language translation version of the specification of goods and services. These should be checked for UK cloned marks.
    

6. If an EU trade mark/design registration is cloned onto the UK register, we can act as your new UK address for service. We would be delighted to arrange this for you or your clients.
    

7. Does your client have any ongoing proceedings before the EUIPO, the Boards of Appeal or any higher courts concerning either trade mark or registered design applications and registrations where there is reliance on a UK base right?
    

8. Is your client relying upon the EU unregistered design right to protect surface decoration or colour?
    

9. The issues discussed regarding trade marks and the scope of protection will be similar for EU registered designs. Protection in the UK be a cloned UK right deriving from the EU registration.
    

10. ​Patents. Clients should be reassured that the implication of Brexit for patents is less substantial as there is little post grant pan-European patent law (in fact the only post grant pan-European law is relatively rare and is at the level of the Court of Justice of the European Union). The European Patent Convention (EPC) is not an EU body. The future of an EU Unitary Patent (UP) and an EU Unitary Patent Court (UPC) that would allow central revocation, enforcement and litigation throughout the EU becomes more uncertain in the light of Brexit.
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If you have any concerns or queries, please contact Carrollanne Lindley or your usual Kilburn & Strode advisor.