Brexit: implications for EU brands

The Brexit is a fact: in two years, the United Kingdom will no longer be a member of the EU. The consequences of the Brits' departure from the EU are incalculable at this time. What is clear is that legislatures will be busy in the coming years. Legislation consisting of European rules will have to be unbundled. This will also be true for the rules governing EU trademarks. EU trademarks apply in all 28 EU member states. What does the UK's departure mean for these European trademarks?

Advantages of an EU brand

More and more business owners are choosing to register their trademark directly for all of Europe. The advantage of an EU trademark is that with one application, protection can be obtained in all EU member states. It is therefore not necessary to apply for protection in all countries separately. The costs are also much lower than if national trademarks were registered in all countries. An EU trademark is already more advantageous if protection is desired for a small number of countries in the EU. This explains why the EU trademark is so popular, even if the trademark is by no means used in all countries.|

Consequences of an EU trademark

An EU trademark is one indivisible right, valid in all EU member states. Therefore, if the trademark does not meet the conditions in one of the EU countries, the trademark cannot be registered as an EU trademark, but the registration is refused. This is the case, for example, if the trademark consists of words that are exclusively descriptive in one of the EU countries. Indeed, a descriptive sign cannot be a trademark. This condition also played a role in proceedings concerning the Memory trademark, which I have written about before.

If the mark is refused as an EU mark, this mark can still get protection via national registrations in the countries where the ground for refusal does not apply. This conversion of a European application to national applications can be done while maintaining the date on which the European application was filed. This conversion does incur costs.

When a country joins the EU, the protection of the EU trademark automatically extends to that new country. This last happened when Croatia joined the EU.

Impact of Brexit on EU brand

Now what happens if a country leaves the EU? This has never happened before, so there are no ground rules ready for that scenario.

The expectation of many writers, which I share, is that there will be some kind of transitional arrangement that will allow trademark owners to apply for a national trademark in the united Kingdom. The obvious thing to do is to allow that conversion while maintaining the older protection date of the EU trademark. If the national trademark cannot benefit from the older protection of the EU trademark, this would mean that from one moment to the next a trademark owner would no longer have protection for his trademark in the UK. If someone else has registered the same mark in the meantime, this would mean that they would suddenly have an older right. Quite apart from the question of whether anything can be done against this younger mark, it creates a lot of confusion and discussion. Food for attorneys, but no business owner is waiting for that.

It will be some time before it is clear what the consequences of the Brexit will be for EU trademarks. Those who operate in the UK and want to secure their position now can of course register a national trademark in the UK now.