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So, what happens to the EU trade mark if Brexit happens?

EU and UK flag, what happens to trade marks in case of Brexit

The upcoming European Union (EU) referendum is, as expected, dominating the news. The financial markets have been reacted badly to a strong possibility of a British exit, or Brexit, from the EU. There are a lot of questions that have been raised over various matters relating to this ‘Brexit’. What will happen to trade, travel and in our specific case trade marks if Britain decides to leave the EU.

As many others have stated, there is great uncertainty in regards to what will happen post Brexit. We are also not clear of the exact changes that will occur, but we can speculate like all others have or are doing so.

One thing is for certain, a vote for Brexit will have significant implications for trade marks. In this post, we’ll try to answer the questions which you might have albeit speculatively.

Would EU trade marks still apply to the UK?

In simple words, no.

However, post Brexit, there will a long period of negotiation in which the British government would negotiate all matters with the EU. Either party might provide new legislations to continue the protection of existing EU trade marks in the UK, but that all depends on the negotiations that will be undertaken. If there are no new legislations provided, then all companies trading in the UK would be required to file a national application. That is if they only had a EU trade mark.

It is understood that the provisions and regulations provided by the EU Intellectual Property Office (IPO) will no longer be in effect so any new EU trade mark applications will not cover UK.

Can UK trade mark attorneys represent clients before the EU IPO?

Again, that would be a no.

The Institute of Trade Mark Attorney (ITMA) has suggested that a large amount the EU trade mark and design registration work will be moved to mainland Europe from the UK. The following effects have been listed:

  • UK-based trade mark practitioners would be unlikely to file EU Trade Marks/EU designs because they would be unable to represent clients before the EU Intellectual Property Office, unless the UK was to join the European Economic Area.
  • Over time UK trade mark and design law would diverge from EU law

A change in the law and removal of EU trade mark courts from the UK would most likely be the end of EU IPO work for UK based trade mark law firms and attorneys.

Will there be any changes to the cost?

Apart from the increase in costs of filing a UK and an EU trade mark separately, the costs ought to remain the same for the UK and EU trade mark.

The same rules would apply to design registration in the EU.

As stated above, we are speculating the changes that might occur as a result of a Brexit. There is a great deal of uncertainty, which is making everyone jittery. ITMA has stated that this will have a negative effect on trade mark attorneys in the UK and the process would become more complex. However, there might be an increase in UK trade mark filings post a brexit, which could help ease the long term negative impact.

Changes To The EU Trade Mark Legislation

EU Trade Mark Office

Attention business owners and entrepreneurs! As of March 23rd 2016, there’s a few changes being made to EU trade mark registration. If you’ve registered a trade mark in the EU or you were planning on doing so, you might need to take notice of a few changes.

Registering a trade mark in the EU means your branding will be protected through all the 28 countries of the EU. Registration is much the same as if you were to apply for a trade mark here in the UK. You should see if the trade mark is already taken, then submit your application. Once the application is accepted by the office it will be published. If no challenges occur during the publication period, registration is granted. You will hold the trade mark for 10 years before needing to renew it.

The new regulations on EU trade marks should make it cheaper, easier and fairer to own an EU trade mark. Here’s a brief summary of some of the changes:

1. Some name changes

Community Trade Marks (CTM) will now be known as EU trade marks. The Office for Harmonization in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO).

2. Reductions to fees, and introduction of a one fee per class system

Different fees now apply for different numbers of classes, rather than the old blanket fee of €900. You can now e-file a one class application for €850 or two classes for €900. Each further class costs €150.

Class          Current (€)          New (€)

1                  900                        850
2                  900                        900
3                  900                        1050

The fees for renewing your trade mark have decreased from a blanket €1,350.00 to a reduplication of the cost of registration. That is, €1,050 for three classes, €900 for two classes or €850 for one class, and additional classes at €150 per class.

Class          Current (€)          New (€)

1                  1350                        850
2                 1350                        900
3                  1350                        1050

A number of other fees have also been reduced.

  • The opposition fee has been reduced from €350 to €320
  • The revocation or invalidity fee has reduced down from €700 to €630
  • The fee for Appeal has gone from €800 to €720

3. Change of time limits to renewal and proof of use

The renewal date for your trade mark is now the same date you filed your trade mark, plus 10 years (rather than the end of the month in which you filed).

When contesting proof of use against someone using a new trade mark, proof of use has to be furnished if the 5 year grace period ended before or at the application date of the younger trade mark, as opposed to the date of publication of the trade mark.

4. Overly generalised descriptions have been abolished

Trade marks are now only protected for the goods and services that can be inferred from the literal interpretation of the Nice descriptions of goods and services. Formally, a few EU member states and OHIM permitted the use of overly general class headings to protect all goods or services contained in the alphabetical list. Those that relied on this ‘class heading covers all’ practice have a six month grace period, from March 23 to September 23, in which to declare to EUIPO (formally OHIM) that their intention had been to seek protection beyond that covered by the literal meaning of the class heading.

5. Search reports and monitoring letters no longer mandatory

Prior to the changes, applicants were not able to refuse search reports and monitoring of trade mark applications as provided by OHIM. From now on, applicants of a trade mark can choose whether they wish to receive search reports, and owners of trade marks can opt out of monitoring letters regarding younger trade mark applications.This will encourage private monitoring or availability searches and eradicate excess paper work.

The following provisions will come into force in October 2017 as they have to be developed by secondary legislation.

6. Trade marks no longer have to be represented graphically.

A trade mark no longer needs to be represented graphically. For example, if you wish to trade mark a sound, you don’t need to provide the visual notation, just the sound file will do.

7. Introduction of EU certification marks

Certifying institutions and organizations can now file EU trade marks as a signifier for goods or services that comply with certification requirements.