As markets overseas for American products expanded in the last two decades, many U.S. companies sought to protect their trademarks by registering them in Europe.
However, filing trademark applications directly through foreign counsel in each of the many European nations can be quite expensive. Cost savings over direct country filings are afforded through European Union (EU) trademark registrations, or European Union designations under International Registrations filed through the U.S. Patent and Trademark Office pursuant to the Madrid Protocol, since these registrations, when issued, cover all of the EU member nations.1
Elisabeth Townsend Bridge, Nebraska 1981, is a partner with SmithAmundsen LLC in Milwaukee, advising clients about patent, trademark, and copyright prosecution, licensing, and enforcement matters for more than 35 years.
An EU filing or EU designation under the Madrid Protocol covers all of the EU member nations, which are the majority of jurisdictions in Europe, including – for now – the United Kingdom. With the prospects of the U.K.’s departure from the EU in 2019, what effect will this have on existing EU registrations and the strategy in seeking European trademark protections going forward?
After the U.K.’s projected exit date of March 29, 2019, EU registrations will no longer protect trademarks in the U.K. However, until that time, EU registrations should continue to be enforceable in the U.K.
What Happens After Brexit?
Commentators predict that, after the U.K.’s official exit from the EU, EU trademarks already registered will automatically be entered by U.K. authorities in the U.K. trademark registry with the same scope of protection, registration date, priority, and seniority as the corresponding EU registration.
This result accords with the position of the EU Commission in a position paper issued Sept. 6, 2017, which states that all intellectual property rights within the EU granted before the U.K. exit date should be recognized as enforceable rights in the U.K. after Brexit.
The EU Commission’s position paper also takes the following positions:
1) No financial cost for the creation of new U.K. trademark rights from EU rights due to Brexit.
2) Minimum administrative procedures involved in issuing U.K. protections from EU registrations.
3) If a EUTM application is pending before Brexit, the applicant keeps the EU priority date if reapplication in the U.K. is required.
4) No refusals of U.K. recognition based on lack of U.K. use before Brexit.
5) If an EU trademark is well-known in the EU but not in the U.K., the owner of the EU trademark registration can claim the same status in the U.K. as in the EU registration.
The U.K. has not yet issued a formal position paper on these issues. However, its European Union (Withdrawal) Bill proposes that EU law directly affecting the U.K. (including EU trademark law) form part of U.K. law after Brexit. It is expected that U.K. legislation clarifying these issues will be passed soon after Brexit.
When to File a Separate U.K. Application
Under the circumstances, trademark applicants are currently advised to proceed as usual in filing EU trademark applications or EU Designations under the Madrid Protocol where protections are desired throughout Europe. Under these circumstances, there will generally not be a need to file a separate U.K. application at this time.
However, in some instances – for example, where trademark litigation is anticipated, or it appears that the EU registration is not likely to issue before Brexit – a cautious approach would advise filing a separate application in the U.K.
1 Albania, Armenia, Belarus, Gibraltar, Iceland, Lichtenstein, Macedonia, Norway, Russian Federation, Switzerland, Turkey, and Ukraine are currently not members of the European Union.