Brexit strategy – Some of the options being considered by the UK Government for existing EU Trade Marks and Registered Community Designs

Duncan J. Morgan | April 2017

At the end of last month, the UK Government formally notified the European Council of its intention to leave the EU, beginning a 2 year negotiating period during which the framework of the future relationship between the UK and the EU is to be decided.  This period is extendable if both sides agree they want more time to discuss the matter.

The UK would not leave the EU before this period expires.  Therefore, for the next 2 years the UK will remain part of the EU and the existing laws and systems in respect of Intellectual Property remain in place.

However, it is worth discussing the systems the UK Government is considering putting in place so that existing pan-EU trade mark (EUTM) and design registrations remain protected in the UK post-Brexit, as this may inform how owners of these EU rights decide to shore up their UK protection.

Whilst we cannot anticipate which method of continued protection for pan-EU rights which exist at the date of Brexit will be adopted, those that appear to be preferred by the Chartered Institute of Trade Mark Attorneys (CITMA - which represents the UK profession) are:

  • The “Montenegro model” - under this model, existing EUTMs and Community Designs would be automatically entered onto the UK registers as UK registrations, with the same scope of protection, registration date and, where applicable, priority and seniority,
  • The “Tuvalu model”  - under this model, existing EUTMs and Community Designs would be entered onto the UK trade mark register, as for the Montenegro model, but only if the owner makes a positive decision to extend them to the UK - probably by filing a form within a set period.

There are several other models being considered, though at this early stage, the Montenegro and Tuvalu models appear to be the front runners.  The devil is in the detail of course, and there are many issues which will need to be accounted for whichever model is adopted.  For example, applicants for UK trade marks, unlike for EU trade marks, must make a declaration that they have a bona fide intent to use their marks. Whether owners of  ’new’ UK registrations spun off EUTMs are required, or just assumed, to have made such a declaration is unclear at present.  There are also important decisions to be made about when such ‘new’ UK registrations would be vulnerable to be revoked for non-use, and indeed whether evidence of use in EU countries outside the UK would be sufficient to defend such actions.

It is important to note that the above models are being discussed for the purpose of continuing protection in the UK for pan-EU trade marks and designs which already exist at the date the UK eventually leaves the EU (or a later date to be determined).  Thereafter, unless the UK and EU agree that these pan-EU rights will continue to be protected in the UK (which at present seems unlikely), separate UK and EU applications will need to be filed to ensure protection in both territories.

In the meantime, our advice to clients who already own EU registrations is that a new and independently filed UK national registration will provide legal certainty. However, whatever method is adopted by a post-Brexit UK, there will almost certainly be provision for EUTMs to be on the UK register. Nevertheless, for house marks and other important marks, a belt and braces approach of filing both an EUTM and a UK application should be considered.

Whatever the result of negotiations, Beck Greener will continue to represent clients before the European Patent Office and the European Intellectual Property Office after the UK leaves the EU in several years’ time.