10 Reasons Why a „Hard Brexit“ will be a Disaster for UK based Trade Mark Owners (and their representatives)

If you are the owner of an EU Trade Mark, and you think that Brexit will have little or no impact on your rights (after all, you will in all likelihood have the possibility of converting the UK portion of your EU Trade Mark into a national UK mark), you had better think again.

Here are 10 (out of many more) reasons why Brexit will make your life as a trade mark owner much harder:

  1. For UK based owners, EU Trade Marks will no longer be valid basis marks for international registrations within the Madrid system. It remains to be seen whether existing international registrations will have to be “switched” from EU Trade Marks to national UK marks in the case of renewals or subsequent designations.
  1. UK owners of European Union Trade Marks that have a reputation in the UK only will be stripped off their well-known trade mark status. In line with ECJ jurisprudence, owners of EU Trade Marks may claim enhanced protection as a well-known mark based on a reputation in a substantial part of the territory, which may also be a single member state. So far, this included the UK. No longer from the date of Brexit.
  1. Oppositions against EU Trade Marks based on UK trade marks will become inadmissible from the date of Brexit. Use-based rights (passing-off etc.) won’t count any more in oppositions before the EU IPO from the date of Brexit. Knowing this, applicants of EU Trade Marks from outside the UK will do everything to delay proceedings from the day Art. 50 is triggered  – and probably even before – until Brexit.
  1. For owners of UK trade marks having filed oppositions against EU Trade Mark applications, this will mean more torpedoes and actions directed against earlier UK trade marks until Brexit becomes effective.This may not only prove costly for UK trademark owners; more importantly, pending oppositions against confusingly similar EU Trade Marks may be ineffective and obsolete already.
  1. Use of an EU Trade Mark in the UK will no longer count as genuine “use in the Union”. This means that a number of UK owners of EU Trade Marks doing little or no business outside the UK will find their marks ripe for revocation within 5 years from the date of Brexit. Oppositions based on such marks may no longer be a good idea, since opposition proceedings may last awhile, sometimes over 5 years, depending on the number of instances and on possible attacks on the earlier mark.
  1. EU Trade Marks registered on the basis of distinctiveness acquired through use may become vulnerable to invalidity actions if such use took place mainly in the UK.
  1. UK trade mark owners having chosen not to renew their national marks and to rely solely on a seniority claim within their EU Trade Mark may find themselves stripped off the priority date of their earlier national registration when the EU Trade Mark is converted into a national UK mark.
  1. UK Courts will no longer be entitled to grant pan-EU injunctions against the infringement of EU Trade Marks. Existing court orders with EU-wide effect related to the infringement of EU Trade Marks occurred in the UK may be reviewed and/or lifted after Brexit, or they may be declared unenforceable outside the UK.
  1. Owners of EU Trade Marks may have to switch counsel away from their (mostly) English firms to some – horribile dictu – foreign lawyer or trademark agent. UK lawyers and agents may no longer be entitled to act as representatives before the EU IPO.
  1. No problem, you may say, my English lawyer is just about to be admitted to the Roll of Solicitors of the Law Society of Ireland. Well, don’t count on it. Let’s not even raise the question of whether English lawyers will be allowed to practice in Ireland after Brexit (after all, this right is based on EU law, and I am not sure their Irish counterparts will welcome them with arms wide open).Your English lawyer or trademark agent may face entirely new challenges: English may no longer be an official EU language. Even if there were a transition period, English will no doubt lose its status as language of the EU IPO (Article 119). English and overseas clients may not be overly eager to instruct English counsel for proceedings that will not be conducted in English. Another language may be upgraded to the status of language of the EU IPO. That may help if your lawyer or agent speaks that language. Polish, anyone?
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