European Union Trade Mark registrations (EUTMs)
Nothing will change until the UK leaves the EU, or until legislative changes are brought into effect. This is likely to be at least two years away.
The ability to file and own a EUTM is not dependent on the applicant having a presence in the EU or being a national of an EU Member State. This will not be affected by the UK leaving the EU.
Although we do not as yet have any indication as to what will actually happen, after the UK leaves the EU, it seems likely that:
1) existing and new EUTMs will not extend to the UK;
2) the UK Government will implement transitional provisions to convert the UK element of an existing EUTM into a UK national Trade Mark Registration;
3) after Brexit a separate UK national Trade Mark Registration may need to be filed in parallel with any EUTM.
If you are a considering filing a Trade Mark registration and there are commercial reasons why you would wish to avoid uncertainty, then speak with your Mathys & Squire adviser who will consider with you the pros and cons of parallel EUTMs and UK Trade Mark Registrations.
Whilst we consider there is good cause to believe that the UKIPO will introduce a procedure that allows for Seniority claims to be reversed for UK registrations or for such registrations to be revalidated, the position at the moment is not clear. Therefore, our recommendation is that in future the owners of EU Trade Marks do not claim Seniority for their corresponding UK registrations but should instead maintain those national rights, renewing them when required.
Also, where Seniority has been claimed for a UK registration, we consider it would be prudent, for the avoidance of all doubt, to review whether it is still possible to have it late-renewed at the UKIPO and, if so, recommend renewal.
Mathys & Squire will ensure that we are able to act for clients both with respect to EUTMs and UK national Trade Marks after Brexit. Mathys & Squire will also be able to handle any transitional requirements necessary in respect of existing EUTMs to preserve UK Trade Mark rights.
Applicants will be relieved to know that the ability to file and own a European Union Trade Mark is not dependent on nationality or residence