Following the vote of the British people on June 23, 2016 to leave the European Union, the British authorities have issued several statements about the impact of Brexit on trademark law. As the official date of the UK’s exit from the European Union approaches on March 29, 2019, it is increasingly likely that a Brexit without agreement (“hard Brexit”) will take place. This possibility must be taken into account in order to avoid any setbacks when the day comes.
This past summer the UK Parliament stated that EU trademarks will clone into the UK register, automatically and without payment of additional fees, following Brexit.
The latest communication on the matter comes from the Department of Business, Energy and Industrial Strategy, on September 24th. The latter issued a Guidance Notice in the event of a Brexit without agreement which confirmed the statements of the UK Parliament on the automatic duplication of EU trademarks in the United Kingdom, without additional fees, following the exit of the UK from the European Union. It was also announced that EU trademark applications pending on Brexit day would benefit from a 9-month period during which a national trademark application in the United Kingdom incorporating the same characteristics of the EU trademark would be possible.
It must be borne in mind, however, that nothing is definitively fixed and that the probability that a Brexit without agreement will take place is quite high. We therefore maintain our advice. Thus, out of caution, we strongly recommend that you register a national trademark in the United Kingdom alongside any EU or international trademark application designating the EU. In addition, for your most important European trademarks, it may be useful to register a national trademark in the United Kingdom. Finally, we also recommend that for any national trademark application filed in the United Kingdom to file in parallel a trademark application in the European Union in order to maintain the opportunity to file opposition against a European Union trademark after Brexit.
In the event of a Brexit with agreement, EU trademark applications or trademarks or international trademarks designating the EU would be protected in the United Kingdom, which could lead to duplication. In such a case, it will be necessary to redefine your trademark strategy.
To be continued !