GJE’s Brexit Update – The Return of the National UK Filing

It is now a few months since the UK voted for Brexit (i.e. to leave the European Union).  It had been hoped that by now we might have greater clarity about timings, in terms of both triggering Article 50 and thereby starting the whole process, and also when the ultimate split might take place.  Prime Minister Theresa May has recently announced that the UK Government will trigger Article 50 by the end of March 2017, but we are still largely in the dark over details of the intended negotiating position.  An early indication of the likely mechanism for IP owners to revalidate their EU trade marks in the UK has also not happened.

In fact, perhaps the only thing which has become increasingly clear is that the current level of uncertainty about both timeframe and mechanism looks set to continue for the foreseeable future, with no prospect of any real answers any time soon.  Indeed, the sheer number of revalidation options under consideration is startling and will give IP owners some cause for concern – in particular those which would result in only a pending UK application instead of an automatic UK registration, giving yet more uncertainty as to outcome, not to mention likely revalidation costs and potential delays.

In view of the above, we now recommend that:

a)    for new marks, from now on clients file both UK applications and EUTM applications; and

b)    for existing EUTMs, clients review their portfolios and file corresponding UK applications now for their most important brands, rather than waiting for any revalidation mechanism to be decided.

We have developed a discounted dual EUTM + UK filing package accordingly and will be happy to provide details on request.

Acting early where new UK applications are concerned is particularly recommended, given significant recent increases in filings at the UKIPO since Brexit, suggesting that many trade mark owners are already hedging their bets and taking matters in to their own hands.  The UKIPO have said they are recruiting additional examiners, but there is concern that examination times may increase in the future, especially if there are further pressures once Brexit actually happens.  We believe that the cost of filing new UK applications now is likely to be far outweighed by the peace of mind of having registered protection in the UK now, instead of waiting for the uncertainty of Brexit to play out over the coming months and years.

Filing new applications in the UK now also gives trade mark owners the opportunity to address any gaps in their protection by including new classes/goods/services, rather than being tied to the specification of their old EUTMs, as will be the case if they instead wait for revalidation.

We remain on hand to advise our clients on all aspects of brand strategy and protection in both the UK and EU.  Please do not hesitate to contact us at brexit@gje.com if you have any questions about Brexit, our discounted EUTM + UK filing package or anything else relating to trade marks, brands or domain names.