Why does Brexit force us to rethink our trademark strategy in the EU?
The United Kingdom voted for its exit from the European Union only two years ago, which means the future situation of the country in respect to the EU is far from a well-defined plan. There is considerable legal uncertainty concerning the scope of Brexit’s impact overall, including in the Intellectual Property regulation. Negotiations are still taking place on this subject.
In relation with the trademarks, the UKIPO has updated its guidance on the process for future recognition of European Union trademark rights, confirming two important measures in this sense. The first one is that EU trademarks will be automatically protected in the UK territory with the same scope of protection, benefiting more than 1.5 million trademarks. Secondly, this process will be held with no extra charge for right holders. However, when the UK has left the EU, the UK Trade Mark Register would work as a local and independent office, like every non-European Union country.
The decision of registering a trademark at a EU or local level, has to be made taking into account several aspects such as the cost-effectiveness, the administrative simplicity and the time consumption, but also the commercial strategy. Therefore, the trademark filing at a national level should be seriously considered in addition to the EU trademark filing, which means everyone wanting to register a trademark, should bear in mind these two different strategies.
In the current circumstances and if the trademark registrar owner considers the first strategy, that is the European Union Trademark filing, it appears to be a good recommendation to consider the filing before the Brexit execution that, foreseeable, will take place on 29 March 2019. In this way, the trademark will be registered covering the current 28 state members and no extra time and cost investment will be needed.
However, as a result of the commercial strategy of the trademark, and after the study and consideration of all the European Union markets taking into account demographic, economic and market aspects, the decision could incline towards the strategy of the national register. In this respect, the Spanish market appears to be one of the most attractive ones, due to its population, growth and consumption rates. The Spanish Trademark Register (OEPM), will provide with full coverage in the whole Spanish territory, guaranteeing in its market the same rights than the European Union Trademark does in the EU territory.
Would you like further information on how to protect your trademarks in the European Union? Are you interested in the conversion of the EUTM into a national trademark in the UK? Contact us!