Protection of trademarks on English-speaking territories: difference between the national approach and the European approach in the context of Brexit


europe-1456245_1920The June 2016 vote in favor of Brexit was a game-changer for the protection of trademark rights within the European Union.

Three options for trademark protection

Today, when a trademark owner wishes to protect a trademark and exercise his/her rights as owner, three options are available to him/her. The owner  may, first of all, decide to register the trademark with the National Intellectual Property Office of the country in which he/she wants to protect the trademark. In the UK, the registration of a trademark is done with the IPO (Intellectual Property Office), and protects the trademark in the UK (England, Wales, Scotland and Northern Ireland) but also on the British Indian ocean territory, the Falkland Islands and the Isle of Man.

For all other British territories under British sovereignty bu which do not form part of it, namely the British Overseas Territories, it is necessary to file a local application in the  territory’s jurisdiction. The trick is that some local applications must necessarily be performed by UK trademark owners. For example, it is impossible to register a trademark in St. Helena or the Solomon Islands without registering it in the UK.

Another possible solution is to use the EU approach to trademark protection. Thus, by filing a trademark with the EUIPO (the Office of the European Union for Intellectual Property), the owner enjoys protection for the trademark within all EU member countries.

Finally, a trademark owner can register his/her trademark in the 97 member countries of the Madrid Union, through an international trademark. The filing is done with the WIPO (World Intellectual Property Organization), and each trademark is examined according to the national jurisdiction concerned.

End of protection for the English-speaking territories

The second option, namely filing an a EU trademark application, will probably undergo important changes in the next two years, following the vote of the United Kingdom in favor of Brexit on  June 23 this year.

Indeed, the European Union trademark is a single title that offers protection in the 28 Member States of the European Union and, automatically, any attached territories of the latter provided they are members of the EU as well. But this qualification, which was called “community trademar” before the entry into force on March 23, 2016 of the new Regulation (EU) 2015/2424  regarding the European Union trademark, might  not  have any legal effect in the UK in the future.

Before the Brexit vote, territories attached  to the UK which are member of the EU were therefore subject to the regulation on the Community trademark. Trademark holders who filed their trademark with the EUIPO therefore enjoyed protection in the UK but also on the Isle of Man and the Falkland Islands. Thus, anyone who currently owns a EU trademark may lose their rights to the trademark in the UK and in these territories.

In addition, within 2 years from now, trademark owners wishing to file a European trademark will no longer enjoy automatic protection of their trademark in the UK. They will need to file two trademark applications: an application for a European trademark with the EUIPO and a national request in the UK with the IPO.

Given the unpredictability of the UK trademark protection, it is important that all trademark owners in the UK having used the national approach be proactive to safeguard their rights.