Brexit and intellectual property : the important issues

The withdrawal of the United Kingdom from the European Union, either with or without ratification of an agreement, will have an impact on trademark law, domain names, and personal data alike. It is therefore necessary to understand the changes and get prepared.

Changes for trademark owners

   1. European Union trademarks (EUTM)

  • EUTMs registered before Brexit will be protected automatically and free of charge by comparable trademarks in the United Kingdom (UKTM), without any loss of priority or seniority; an opt-out option is available.
  • A holder of EUTMs located in the United Kingdom will need to appoint a representative in a Member State for correspondence purposes.
  • Use of an EUTM only in the United Kingdom will no longer be considered as an actual use.
  • UK courts will no longer have jurisdiction over European trademarks. Only the proceedings commenced before Brexit will continue before the courts in the United Kingdom. The United Kingdom will no longer be bound by decisions of the Member States.

Dreyfus advises you to:

If you are an owner of a registered European trademark:

If you applied for an European trademark and your application has not yet been accepted:

  • Try to obtain the registration before Brexit. If it is not possible, you will still benefit from a 9-month priority period when you will be able to apply for an equivalent trademark in the United Kingdom without any loss of priority or seniority.
  • BUT anticipating trademark registration in the UK is useful in order to obtain prior rights in the EU and the UK, and to anticipate administrative delays due to an increase in number of UKTM trademark applications.

If you have initiated a trademark dispute proceedings :

  • Resolve ongoing disputes that you initiated before the date of the exit of the United Kingdom. The outcome of the dispute concerning a European trademark will impact all the countries concerned, including the United Kingdom.

If you are a defendant in a trademark dispute :

  • Wait for the effective date of the Brexit. The resolution after Brexit could allow retaining the trademark in the United Kingdom, while a resolution before Brexit will simply open the possibility for initiating the procedure in order to convert a European trademark into a UK trademark.
  • Consider filing separate actions in the European Union and the United Kingdom. A custom strategy would be required for each individual case. An in-depth study will have to be carried out to determine the necessary procedures. Dreyfus advises you on the best strategy to adopt in your particular case.

   2. United Kingdom brands (UKTM)

  • Trademarks registered in the United Kingdom can no longer be used as prior rights in proceedings against European trademarks.

Dreyfus advises you to:

  • Register European trademarks now to obtain rights in the EU and protect your rights in the United Kingdom and the European Union.

   3. International brands (WOTM)

  • International trademarks designating the EU will be treated same way as European trademarks.
  • European trademark owners residing in the United Kingdom will no longer be able to apply for international trademarks based on European trademarks.

Dreyfus advises you to:

  • Register international trademarks on the basis of your European rights, in order to obtain global protection.

Changes for holders of <.eu> domain names

Reminder: A domain name in <.eu> can be reserved by a company having its registered office, central administration or main place of activity in a Member State, or by any person residing in the EU.

  • Companies and individuals residing in the United Kingdom will no longer be able to register or renew a domain name with <.eu> TLD.
  • Domain names with <.eu> TLD for which the registrant is a resident of the United Kingdom will be deactivated and then re-opened for registration.

Dreyfus advises you to:

  • Update your contact details now indicating that you are an EU resident (e.g. a subsidiary).
  • If this is not possible, transfer your domain name to an EU resident now.
  • Be careful to take the necessary measures to avoid a strategic domain name to become a target of cybersquatters.

Personal data changes

With the adoption of the Data Protection Act 2018, together with the GDPR in the UK the level of personal data protection requirements is expected to remain unchanged. In the event of a withdrawal agreement governing Brexit, the GDPR would become a provision of the United Kingdom domestic law.

However, the change of the United Kingdom’s status will have practical consequences for controllers and processors.

  • Data controllers and processors will have to appoint a representative in the EU if they carry out processing activities related to persons in the EU.
  • Transfers of personal data between the United Kingdom and EU Member States will no longer be unrestricted. As a third country, the United Kingdom could seek to benefit from an adequacy decision recognizing it as a state with an adequate level of protection of personal data. Otherwise, the transfer can only be made after appropriate security measures for personal data are put in place.

Dreyfus advises you to:

  • Limit transfers to/from the United Kingdom to what is strictly necessary.
  • Monitor the transfers to ensure that they comply with the provisions of the GDPR, for example by using “standard data protection clauses”.
  • Mention the transfers in the information notices to the data subjects.