Brexit: Comments on its impact on European Union trademarks.
Past June 23rd it was the first anniversary of Brexit’s victory in the British ballot boxes and only a few months ago, in March 29th, article 50 of the Lisbon Treaty was formally invoked with the official notification made by the United Kingdom to the EU. In principle, negotiations between both sides to discuss the exit conditions should have ended by April 2019.
Although for the moment it seems it is not one of the EU priorities, the Brexit will strongly impact on the regulation of Intellectual Property rights and, in particular, the EU trademarks regulation. In the following lines we will analyse some aspects which will probably experience changes in respect to the EU trademark’s regulation once the UK leaves the EU.
The first question that comes up is whether or not UE trademarks will have effect on UK territory and how will it happen. In our opinion, there are three scenarios that should be considered:
- That when the UK leaves the EU, EU trademarks and trademark applications registered/filed before that moment automatically stop granting protection in UK. Some EU trademarks’ holders have decided to anticipate this scenario by filing UK trademarks.
- That the owners of pre-Brexit EU trademarks applications and registrations would be entitled to convert their EU trademark rights into UK trademarks, with or without paying a fee, during a specific transitory period to that effect – while maintaining its unitary effects for the rest of countries. This solution may not be the most convenient one if we take into account the great number of EU trademarks In this sense, opting for this solution could indeed collapse the British Office.
- That the effects of pre-Brexit EU trademark applications or registrations are maintained up to its registration or nearest renewal, moment when the holder of the right would have the possibility of converting it in a UK trademark.
Other issues that will deserve a careful analysis – and also interpretation by EU and UK Courts – are, among others, the requirement of “genuine use” of a EU trademark. Would the genuine use of an EU trademark in the UK after its exit from the EU be considered a valid use? How long? Additionally, the scope of EU trademarks with regards the exhaustion principle will not vary if the UK continues to be part of the European Economic Area. If not, the goods commercialized with the authorization of the trademark holder in UK will require an additional authorisation to be resold in the European Union.
There are certainly many open-ended questions. For the moment, we suggest EU trademark owners, their licensees and other concerned parties, to review their private contracts in order to avoid potential conflicts after the Brexit. It will be exciting in any case to see how these issues evolve.
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- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks
- Judge Soler Pascual publishes first article in Spanish in INTA Trademark Reporter (R)
- Spain ran low in 2012 regarding National IP rights