Brexit and European brands
Since the start of the Brexit negotiations, the issue of European trademarks has been a key issue. This is becausethe European trademark is a title valid in the 28 Member States of the European Union.including the United Kingdom. The European Intellectual Property Office (EUIPO) registers nearly 135,000 trademarks each year. It is estimated that by 2017, 1.7 million European trademarks and designs will be registered. What will happen to these trademarks once the UK has left the European Union?
The need for an agreement on Brexit to preserve European trademarks
On 29 March 2017, the English Government will initiate the procedure provided for in Article 50 of the European Treaty. Exit negotiations from the EU begin and will have to continue over a period of two years. In the absence of an agreement ("no deal"), the United Kingdom to leave the European Union on 29 March 2019 and will become a third, non-EU country.
Very quickly, the experts are wondering about the future of European brands. The 1ster December 2017, the European Commission publishes an opinion on the issue.. This text states that in the absence of an agreement between the UK and the EU, European trademarks will remain valid in the 27 Member States but will no longer have effect in the UK from 30 March 2019. If a European trademark had UK seniority, it would also cease to have effect.
This solution would obviously be disastrous for British companies that would have registered only European trademarks. It would also be very inconvenient for foreign companies exploiting their European trademark on the British market.
The transitional agreement or the hope of a transformation of European brands
Since November 2018, Theresa May's government has been working on an agreement to arrange the UK's exit from the EU. This text, which favours maintaining the current legal situation, includes several provisions on industrial property rights.
It provides that the European Treaties will continue to apply to the United Kingdom until 31 December 2020. At the end of this period, EU trademarks will benefit from automatic transformation (without review). European trademarks registered before 2020 would then be split into two parts: a UK national trademark and a European trademark valid in the other 27 member states. The UK trademark would benefit from the same filing and seniority dates as the European title.
This draft agreement had significant advantages for European trademark applicants and owners. They retained their full rights in the EU and the UK. This was achieved without having to take any additional steps or pay any application fees.
But the agreement was rejected by the British Parliament on 15 January. The transitional measures referred to above cannot therefore be applied. The date of 29 March for the Brexit now appears very close. However, it seems that the United Kingdom itself is considering applying a transition period for European trademarks.
"No deal": no guarantee for European brands
In the absence of an agreement, the United Kingdom will leave the European Union on 29 March 2019. Previously registered European trade marks will no longer be valid there.. They will, however, continue to apply in the remaining 27 Member States. In order to retain rights in the UK, national trademarks will have to be re-registered (or referred to the country in an international trademark application).
However, the UK government has announced a transition period for European trademark holders.. The United Kingdom Trade Marks Office (UKIPO) should offer owners of earlier European trade marks an equivalent English title. The UKIPO should thus recognise the filing dates of the earlier European trade mark, as well as any priority and seniority claims. According to government announcements, the Office would not conduct a new examination.
However, this simplified procedure should not be free of charge. Moreover, it seems that this procedure will only concern European trademarks already registered.
For all European trademarks under examination as at 29 March 2019holders will have a 9 months delay to proceed with a new national trademark application in the United Kingdom. Owners who would like to extend their trademark to the UK will then have to pay the UKIPO fees (approximately €350 for a trademark in 3 classes).
The British government's announcement has not yet been formalised. Given the very uncertain context and the high probability of a Brexit without an agreement, it is essential to secure your rights by approaching your industrial property attorney who will be able to accompany you in this process.