U.K. Promises to Protect All Existing E.U. Trademarks Post-Brexit
By Procopio Partner Lisel M. Ferguson
To say that uncertainty remains over exactly what the European trade and commerce landscape will look like once the United Kingdom (UK) completes its “Brexit” from the European Union (EU) would be an understatement. That said, developments are starting to appear positive for trademark owners seeking protection in both the UK and EU. While the U.K. government’s official Brexit blueprint released in mid-July made no mention of trademarks, a key member of the British Parliament has now promised that all existing EU trademarks would continue to be enforced in the UK, with protections free and automatically.
“UK-owned trademarks and design rights in the EU27 will be unaffected by our withdrawal” from the EU, said Parliamentary Under-Secretary of State for Exiting the European Union Robin Walker during a July 19, 2018 House of Commons debate, as reported by World Trademark Review. “Meanwhile, we have agreed to protect all existing EU trademarks, community-registered designs and unregistered designs in the UK as we leave the EU. In place of those EU-level rights, 1.5 million new UK trademarks and registered designs will be granted automatically and for free.”
This is the first time the UK government has addressed trademark conversion from the EU to the UK, including the thorny issue of cost. It is worth noting, however, that no formal agreement has yet been fully negotiated and finalized between the UK and the EU, so this situation could change. The statement by Walker also leaves questions unanswered, such as the status of any pending EU trademark applications when the final break occurs.
The Parliamentary debate followed the official release a week earlier of UK Prime Minister Theresa May’s white paper outlining her government’s Brexit strategy, “The Future Relationship Between the United Kingdom and the European Union.” Nowhere in the 104-page document are trademarks addressed. However, there are several references more broadly to the importance of respecting and maintaining intellectual property protections while referencing the role of trademarks: “Intellectual property (IP) rights play an essential part in encouraging the universal benefits of innovation and creativity, as well as protecting the reputation of products and services and helping prevent consumers from being misled about the quality or provenance of goods.” The report touts the country’s ranking of third in the world in the Global Intellectual Property Index, but provides no substantive guidance on the issue of transitioning EU protections to the UK.
As you can see by what transpired over the course of a single week in the British Parliament—with high-level resignations of members of May’s government—the politics and policy surrounding Brexit remain volatile. We will continue to follow events with a focus on helping our clients, many of whom hold numerous EU trademarks. If trends continue as outlined by Walker on the floor of the House of Commons, however, the transition could be a smooth one for many trademark owners.
Lisel M. Ferguson counsels clients on patent, trademark and copyright prosecution worldwide, and intellectual property litigation throughout the United States. Lisel’s practice focuses on computer hardware and software, sporting goods, apparel, Internet, entertainment, medical devices, agricultural products and services, and consumer goods. She has experience working with Federal Litigation, Trademark Trial and Appeal Board (TTAB) actions, Uniform Domain-Name Dispute Resolution Policy (UDRP) actions, domain name disputes and Internet law. She is experienced in handling all aspects of intellectual property; in addition to protection and enforcement she has experience with customs, negotiating and drafting licenses and royalty agreements worldwide, with clients from Asia, Mexico, Chile, Australia, Canada, the Netherlands and the United Kingdom.