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Implications of BREXIT on owners of EU trade mark holders

Following on from our Six Point Brexit Strategy featured in our June 2016 newsletter, there is little concrete news to report in relation to the exact implications Brexit will have on the owners of existing EU trade marks. Trainee Solicitor Rebecca Chang predicts problems and suggests a solution…

As things stand, owners can rely on their EU trade marks to protect their brand in the UK but in future may find themselves unable to enforce rights in the UK. It is to be hoped that the transition will be a smooth one in which some form of bilateral treaty is formed between the UK and EU. However, the continued validity of IP rights deriving from EU regulations and whether they will still apply to the UK is uncertain.

UK courts are currently required to follow decisions of the Court of Justice of the European Union (CJEU), but after Brexit is concluded they will no longer need to do so as the CJEU will cease to have any binding authority. It is fairly likely, however, that CJEU decisions will continue to be persuasive and will indirectly influence the UK.  EU trade mark regulations are also no longer likely to apply to UK trade marks, especially if the UK decides not to remain in the EEA.

Following Brexit, there may be many problems for EU trade mark holders. For example, under UK/EU trade mark law, if a trade mark registration is over 5 years old, it becomes vulnerable to revocation if it has not been properly used in a significant portion of the Union. If use is primarily in the UK, it is unlikely that that use would count as evidence for defending an EU trade mark registration in the face of an attack, which would lead to the trade mark being revoked.

In light of the ambiguity surrounding trade mark law, it is highly recommended that businesses should seek trade mark registrations at both EU and national UK levels in order to have certainty in the post-Brexit future.  

Silverman Sherliker LLP’s Intellectual Property unit specialises in all areas of contentious and non-contentious IP matters, including trade marks, copyright, designs and patents. To discuss any related matters, please do not hesitate to contact us on +44 (0)20 7749 2700 and ask for any of the following or email  IPDepartment@silvermansherliker.co.uk

Rebecca Chang, Trainee Solicitor
Christopher Sherliker
Robert MacGinn
Nigel Parnell
Alban Radivojevic

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