Brexit Update: what could happen next and other news

What's going to happen to EUTM portfolios?

It's been over two months since the UK decided to leave the EU. The issue perplexing most brand clients is what will happen to their existing EUTM portfolios when the UK finally leaves the EU?

This won't happen for at least 2 years and some commentators are suggesting even longer. UK IP industry bodies have been working hard to put together options for the UKIPO to consider. Below are some options of what could happen at the point of the UK's exit from the EU:

  1. The UK deems that all existing EUTM registrations cover the UK without the need to record the fact on the UK trade mark register. This is the so-called the Jersey model.
  2. All existing EUTM registrations are automatically entered onto the UK trade mark register as UK national marks. This the Montenegro model.
  3. EUTM registrants elect to extend their EUTMs to the UK as national marks in an agreed window preceding the UK's exit. This is the Tuvalu model.
  4. As outlined in option 3, but the UKIPO reserves the right to refuse a EUTM registration from entering the UK register as a national mark if it is deemed objectionable under UK trade mark law and practice. This has been called the Tuvalu model with veto.
  5. As with the existing procedure for conversion of EUTMs into national applications, registrants of EUTM registrations must apply for an equivalent UK registration and undergo full examination by the UKIPO. The application can be made following the UK's exit or during an agreed window preceding exit but the UK mark would retain the original filing date of the EU registration. If successful, the application is published for opposition purposes. This is the Conversion model, although note that unlike the existing conversion procedure, the EUTM would still remain registered for the rest of the EU.
  6. EUTMs remain valid in the UK until they are due for renewal at which point registrants must positively elect to have an equivalent UK trade mark. This the Republic of Ireland model.

Options 1 and 2 are by far the most attractive procedurally and from a costs perspective, but come with other challenges, particularly cluttering of the UK register with marks that are not used in this jurisdiction. 

In other news

UKIPO issues its Guidance

Last month, the UKIPO issued a statement with its response to the Brexit vote. Rather than the detailed guidance we had hoped for, it reflects the current view of "business as usual" in the short-term and "wait-and-see" in the long-term. While this does not move the conversation forward for brand owners, it at least demonstrates that everyone is in the same boat.

In early September, the Institute of Trade Mark Attorneys (ITMA) has a meeting with UKIPO about Brexit. However, given the limited content of the UKIPO guidance, we do not expect anything concrete to come out of it.

To read the full UKIPO guide, please click here.

Debate on the constitutional and legal implications of Brexit held in London

In July, University College London's Faculty of Laws held a debate to talk about the constitutional implications of Brexit. Chaired by legal commentator Joshua Rozenberg, the panel considered the following questions:

  • Is Parliamentary approval needed for triggering article 50?
  • What role should Parliament have in the Brexit process?
  • Can and should there be exit negotiations with the EU before the triggering of article 50?
  • What are the possible options after article 50 has been triggered? Can the notice of withdrawal be withdrawn?
  • What are the options for future relations with the EU?
  • How will Brexit affect areas of UK law that have been heavily dependent on EU law?
  • How will Brexit affect the constitutional dimension of devolution?

The event was filmed and you can see it here.