Brexit and your trade marks: “sharp practice”

18th April 2019

The UK Parliament is now in recess for Easter and with that the ongoing Brexit situation is paused. As it stands the UK will leave the EU after 31 October 2019 unless a further extension, to Brexit, is agreed or an agreement is reached with the EU as to the deal on which the UK will leave.

As we have previously reported here upon Brexit the holders or registered EUTMs will be automatically granted equivalent UK rights at no cost to the rights holder.  This remains unchanged following the extension to 31 October 2019.

However, despite this it has been reported that there are unscrupulous companies writing to EUTM owners suggesting that they file an identical trade mark application in the UK and offering to provide that service to the EUTM owners. The Chartered Institute of Trade Mark Attorneys (“CITMA”) have described this as “sharp practice” and have requested that such activities cease. Whilst there may be situations where it is advisable that the owner of an EUTM applies for an equivalent UK right (for example if they have only used the mark in the UK and are concerned that the EUTM may be vulnerable to non-use cancellation) these are very much fact specific and blanket recommendations to file an identical UK application (to an existing registered EUTM) are, in our view, inappropriate.

Irrespective of the outcome of Brexit we will continue to advise clients in respect of their global portfolios. Whilst the question of whether, or not, we can continue to directly represent clients before the EUIPO is yet to be determined we have a solution in place whereby we will simply instruct agents within the EU to deal with the filings/formal representation requirements on our behalf, thus ensuring consistency and continuity for our clients.

If you receive any unsolicited correspondence advising you to file UK applications that are identical to your registered EUTMs and wish to discuss the same, irrespective of whether you are an existing client or not, then please do get in touch with our specialist Trade Mark Team.