Consequences of the Brexit Vote on European Trademarks

• Author: Robert Reading
• Position: Robert Reading is Director of Custom & Managed Solutions at CompuMark in London. He manages a team based in the United States and Europe that delivers bespoke trademark-related services to clients, with particular emphasis on record validation, gap/protection analysis, and global search and portfolio management projects.
• Pages: 33-34

Published in Landslide® magazine, Volume 11, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

The referendum that started the United Kingdom

on a road toward its divorce from the Euro-

pean Union (EU) has impacted business and

the economy a great deal. The effects of the

vote and the subsequent “divorce proceedings”

have been felt far beyond Europe, too. Brexit,

it seems, is affecting everyone. While many of these impli-

cations are strictly long-term and have not yet been properly

dened, there have been some immediate effects. They have

begun to lter through the United Kingdom and European

countries, touching on areas from trade to travel. And the

intellectual property (IP) market is no exception.

While some industries, such as retail, were quick to feel the

effects of the vote (with prices seemingly increasing overnight),

other sectors have been slower to come to terms with the changes

that may occur once every i has been dotted and every t has been

crossed. In the IP market, questions abound regarding the registra-

tion of trademarks. Currently, any business wanting to operate and

protect its interests in the United Kingdom, EU, or both simply

needs to le a mark with the European Union Intellectual Property

Ofce (EUIPO). However, that will change in the future.

Already a Change in Tactics

It is important to note that while draft guidelines have been

put forward,1 nothing is set in stone just yet, which means

there is still uncertainty over what to expect going forward

when the United Kingdom does split from the EU. However,

what is clear is that the impending Brexit is already affecting

ling behavior; that is, the approach to the trademark ling

process. As mentioned, in the past this has been relatively

simple: for both EU and U.K. trademarks, all organizations

needed to do was le with the EUIPO to ensure a brand was

covered across the 28 EU member states. Organizations have

been encouraged to “wait and see,” but many brands are

already changing their approach. Instead of just ling one

application with the EUIPO, they are ling an application

for the same mark in the United Kingdom, too. While this

approach looks likely to be needed post-Brexit, again things

remain somewhat unclear for now, and many feel that taking

this approach early will avoid confusion going forward.

This sentiment is backed up by CompuMark research, which

Consequences of the

Brexit Vote on

European Trademarks

By Robert Reading

Robert Reading is Director of Custom & Managed Solutions at

CompuMark in London. He manages a team based in the United States

and Europe that delivers bespoke trademark-related services to clients,

with particular emphasis on record validation, gap/protection analysis,

and global search and portfolio management projects.

shows there has been a 20 percent increase in U.K. trademark l-

ings since the Brexit referendum in 2016. There has also been a

signicant rise in the average monthly ling gures, from 4,538

to 5,567—an increase of more than 30 a day. Taking this a step

further and looking at U.S.-based applicants of U.K. trademarks,

the increase is even more noteworthy, with the average num-

ber of monthly applications rising from 104 to 261—an increase

of 150 percent. Conversely, the Brexit vote has had a marked

decrease on the amount of applications by U.K.-based applicants

per month for EU trademarks, with the monthly average falling

from 933 to 766, an 18 percent decline.

What the trademark environment will look like post-Brexit is

open to conjecture, but the likelihood—and the reason for those

readying themselves now—is that from March 2019, brands will

have to treat U.K. lings in much the same way as they would for

countries like Switzerland or Norway, regions that are part of con-

tinental Europe but not actually a part of the EU club. It is a case

of “if your name is not on the list, you’re not coming in” and will

mean signicant additional work and expense for trademark pro-

fessionals that have to le two marks instead of just one.

While the approach will not necessarily change the way

that trademarks are searched, cleared, or watched, it will

mean that there will be an increased reliance on tools, solu-

tions, and processes to automate some of the procedures to

protect margins for trademark professionals.

In addition, there is also likely to be a change in the way can-

cellations are viewed. In the past, use of an EU trademark in a

single EU country was enough to prevent it from being vulnerable

to cancellations due to nonuse. However, post-Brexit, if the United

Kingdom is the only market of interest for existing EU trademark

holders, their mark might now be vulnerable for cancellation.

Going Forward

While the draft agreement provides some clarity on how the

EU and the United Kingdom will manage existing trademark