The world is still reeling from the UK’s referendum to leave the European Union (EU). There has been resulting volatility in the financial markets and the uncertainty of trade implications has driven much of the concern. Of course as a trademark practitioner, my own initial concern is what about the trademark implications?
Before getting started on analyzing some of the concerns, it’s very important to note that the BREXIT is not a done deal. The news and talking heads are treating this development as if it’s all over, but in reality the BREXIT could take months and, most probably, years to sort out as the UK and EU negotiate a new formal relationship, as well as fleshing out new trade agreements and policies regarding intellectual property. The biggest take away from this is that the UK could, at any time prior to invoking Article 50, change course and remain in the EU. However, as a lawyer and, thus, a cynic I would advise that folks hedge their bets on the UK Brexiting with deliberate haste.
As it currently stands, a trademark owner with an EU registration can enforce those rights in the UK without the benefit of an UK registration. Also, one can hire a UK attorney to represent them in trademark matters pending before the EU’s Office of Harmonization in the Marketplace (OHIM). The concern however will be whether after the UK leaves the EU will both of these current facts still hold true? Unfortunately, as it stands right now the only answer is the tired two word lawyerly response, “that depends.”
If the EU and UK negotiate a trade agreement that would include EU trademark enforceability in the UK – then trademark owner’s worries are placated. Is this the likely outcome? Again and forever the cynic, I cannot see an outcome where the spurned EU allows this, besides if the UK truly has become an insular and nationalistic regime I’d be inclined to believe that they wouldn’t want EU trademarks to be legitimized in their jurisdiction and to the detriment of their legal community.
With the foregoing in mind, if your company currently relies on its EU registrations for protection of your brands in the UK, its time that you consider filing directly with the UK Intellectual Property Office for registration of your trademarks in the UK.
Another consideration with regard to your trademark and in fact your company’s legal rights in the EU and UK that you should be mulling over is representation. Currently, if your company is represented in both the EU and UK by a British firm, you could find yourself without legal counsel in the EU should the Brexit come to fruition. Currently, in many areas of the law, legal reciprocity allows for British and EU agents to represent client in both jurisdictions. A likely outcome of the Brexit will be that the reciprocity enjoyed today will cease. With that in mind, you may want to start shopping for a firm to retain in both jurisdictions.
The Brexit is a momentous historical development and the fallout is certainly in flux. The ramifications are limitless. Will Scotland and its growing tech hub secede from the UK and remain an EU member? Will the calls for France’s FREXIT or Spain’s SPEXIT grow louder and lead to a further break up of the EU? There certainly is a lot to consider for American businesses. One consideration going forward should be discussing a strategy for securing your IP in the EU and UK that doesn’t leave you out in the cold should the Brexit actually come to pass.