On June 23, 2016, the United Kingdom voted on a public referendum to leave the European Union. This referendum, known as “Brexit” (a combination of Britain & Exit) and has put the future of British trade with other European Union members in a state of turmoil. However, its effects could reach far outside of Europe, as U.S.-based businesses try to establish plans for protecting their trademarks in the European Union, and now, separately in the United Kingdom.
The European Trademark (also known as “the EUTM”) is an effective way to obtain a trademark registration that provides a measure of protection in all EU-member-states. With one registration, trademark owners were able to vastly expand the protection of their trademark portfolios and have some assurances that their efforts to expand into Europe would not cause damage to existing trademarks. However, the Brexit process has created a significant amount of questions regarding whether the EU and the UK will extend reciprocal rights in their trademarks to each other.
Trademark owners may be wondering:
Currently, the UK government has not determined what will happen to existing trademarks. It may try to negotiate a trade deal with the EU to keep the current protections, at least to some degree, in place for trademarks. However, the Brexit process has not been smooth and has created some animosity between the EU and the UK. It would seem unlikely that the EU would welcome a partnership with the UK on trademarks if the UK is not willing to extend other economic benefits to the E.U. member-countries.
What is clear is that every trademark who has business in Europe, or is considering expanding into Europe, needs to have a plan to protect their trademarks.
How can I protect my trademark in the European Union?
Trademark owners can still file EUTM trademark applications that, as of right now, cover the United Kingdom. An EUTM application will provide protection in the following countries:
Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia,Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and (for now) the UK.
However, trademark owners should have a long-term plan to deal with the implications of Brexit.
Should I file a trademark application in the United Kingdom?
At this time, companies should consider filing separate trademark applications in the United Kingdom to ensure protection of their trademarks within Britain. Ultimately, the costs for filing a separate application in the UK are minimal (typically less than $2,000 with a reputable boutique law firm). If your company plans to (or is doing) a lot of business in the United Kingdom this is a small price to pay to protect yourself from geopolitical risks associated with your trademark protection.
What is the best way to proceed?
Each trademark owner’s personal situation is unique and the trademark owner should consult an experienced attorney on the best way to proceed. From a general perspective, the United Kingdom will still be a member of several international trademark treaties that give foreign applicants (including U.S. trademark holders) the ability to file for protection under the Madrid Protocol, a system that allows the registration of a trademark in many countries using one application. In many cases, an applicant through the Madrid Protocol can register in the E.U. and in the U.K. at the same time. Otherwise, it may make sense to hire local counsel in each jurisdiction the trademark owner has a marketplace presence.
There are still many questions about Brexit that will need to be answered in the coming months, but every trademark owner should have a plan to ensure that their trademarks are adequately protected in the United States and abroad.