Following the UK vote to exit the EU, an important question is: will the EU trademark (formally known as Community Trademark) continue to cover the UK? The UK’s Intellectual Property Office (IPO) did not yet comment on the potential impact on trademarks and designs following the Brexit on June 23, 2016. If the UK is indeed going to leave the EU, chances are that the UK will no longer be a part of the EU trademark and EU design systems.
In view of Article 50 of the Lisbon Treaty, the withdrawal from the EU Trademark and Design systems will not have an immediate effect. This Article stipulates a two-year withdrawal and negotiation period (which can be extended). It is unsure if the UK would need to legislate for successor rights as part of that withdrawal, like a conversion of EU rights into UK law, or if UK proprietors would be required to re-register EU rights at the UK IPO.
Still, it is recommended that companies review their current filings and registrations to ensure their rights continue to be protected in the EU and UK. It is important to prioritize rights for action and protection, consider the possibility to withdraw duplicate rights (EU rights that overlap UK registrations), make sure your trademarks are in line with your business (clean up classes etc.), review primary rights to ensure that they are up to date and consider associated effects of the Brexit for your trademarks (existing license agreements, disputes etc.).
On another note, if you have an EU trademark and that trademark is used only in the UK, then this mark could be exposed to cancellation actions for non-use if the 5 year grace period has passed. Although it is already possible to convert EU trademarks to UK rights, keep in mind that such conversions will leave companies without EU trademark protection. Also, when you convert an EU trademark for the UK, the UK registration could also be vulnerable where it concerns cancellation actions. One thing is for sure, if the UK really exits the EU, the effects on IP rights will most certainly be discussed and negotiated upon and a clear transition as well as a final agreement shall be put in place between the UK and EU.
Trademarkhost is specialized in EU and UK trademarks! Should you have any questions, feel free to contact us.
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