A straight answer, taking into account the potential impact of the Brexit decision, is ‘probably yes’ – you will need EUTM and UKTM protection.
As you will have gathered, there will be no changes to the UK’s full membership of the EU for at least the next two years. In the interim, there is significant negotiating to be conducted to determine the relationship that the UK will have with the EU after the ‘exit’ becomes final. How existing EUTM registrations will be dealt with is currently up for discussion, and it is not yet known which strategy for extending the rights of Trade Mark owners will be followed.
What will happen to our existing EUTM registrations?
Briefly, it seems unlikely that ‘automatic extension’ or ‘revalidation’ of existing EU rights to cover the UK will be applied. It is most likely that a process akin to either the ‘conversion’ process or the ‘transformation’ process will be followed. In either case filing date of the EUTM would be retained, but in the case of ‘conversion’, re-examination would occur. This gives rise to the possibility that Registration in the UK could be denied.
You can be assured the interests of rights holders will certainly be paramount in setting up any new system/process. However, whilst uncertainty prevails, it is recommended that trademark protection is sought in the UK and the EU. (if it seems likely that the UK is core to your business). This will also avoid the potential’ limbo’ period where existing EU rights are extended (by whatever method) to the UK.
Should we take action now, or ‘wait & see’?
We would recommend an audit for owners of existing EUTM registrations. This takes into account the relevance of pan-European trademark protection versus market activity. If the UK is core to your business activities, then you may opt to file new Applications in the UK now rather than taking the ‘wait & see’ approach. This will give rise to increased spend, and ultimately may duplicate the protection secured, so budget constraints will need to be balanced with peace of mind.
Albright will be able to meet your requirements before the UK IPO and the EUIPO, however you decide to proceed. We will of course provide updates as and when any new strategies are agreed and put into place.