Brexit will likely profoundly affect trademark and designs practice in Europe. We have already amended our recommendations regarding trademark agreements (what is “the European Union”, and do you really want the law of England and Wales to govern the agreement?). We also expect that EUTM oppositions, which are based on UK rights only, might be suspended in the near future. Here are our first thoughts.

Timing – should we file UK applications now?

We have seen newsletters from UK counsel recommending the filing of UK applications now. The best and most unbiased position we have seen to date is from the INTA website dated 1 July 2016 and is entitled How the Brexit Vote Will Affect Brand Owners: A Q&A Guide. There the conclusion is:

“There should be no disadvantage to not filing UK applications that equate to a validly protected EUTM in the meantime (before Brexit)”.

Because we expect INTA to lobby hard for a (semi)automatic conversion mechanism extending all EUTMs − including future ones filed prior to Brexit − into the UK, and that the UK will likely oblige (think of the UK renewal fees generated if conversion was automatic and free). We see no reason to file both an EUTM and a national UK application at this time.

(That said, we file UK applications, as well as Norwegian applications, direct from our Copenhagen office, and offer 10% discount on fees for EUTM + UK + Norway, all on a single invoice.)

Oppositions involving UK rights

For any EUTM oppositions based in whole or in part on UK rights, we would recommend checking these to see if it might be relevant to 1) contact the opponent and/or 2) petition for suspension. It could be that the opponent would consider a voluntary suspension of the opposition. Alternatively, it could be possible to request the EUIPO to suspend the matter pursuant to Rule 20(7)(c) of the EUTM Implementing Regulation, which gives the EUIPO the possibility of suspending an opposition against an EUTM “where a suspension is appropriate under the circumstances.”

Trademark agreements

We would recommend that “the European Union” be more specifically defined, for example:

“This agreement is valid in all of the current and any future Member States of the European Union”

As regards choice of law and venue, this is often hotly negotiated in trademark agreements. Our preferred clause is:

“This agreement is governed by the law of the Defendant”

and we expect that Brexit will make this more attractive, in particular if any other Member States follow suit.

UK counsel for EUTMs?

It is unlikely that UK counsels will be able to represent EUTMs after Brexit. Something special might be negotiated, but the most likely scenario given the “leave” position is that existing portfolios represented by UK counsels will have to be moved. We would take over such representation free of charge.

Use of the EUTM in the UK only?

Until Brexit, genuine use of an EUTM in the UK only would be sufficient to survive a cancellation action based on non-use. After Brexit, however, there would have to be genuine use in at least one other EU Member State in order to survive a cancellation for non-use.

Learn more about European Union Trademarks

NJORD Law Firm is a full service provider of all services concerning European Union Trademarks (EUTMs), including searches, filings, oppositions, and appeals. Peter Gustav Olson, head of the NJORD Law firm EUTM department, is an American lawyer and a Danish lawyer, and has over 20 years of experience in resolving all kinds of EUTM related issues. He runs an efficient, paralegal-driven department, providing EUTM services to startups as well as multinational corporations.

Learn more about NJORD’s services regarding EUTM applications, oppositions, and cancellations and more about the European Trademark Reform 2016: European Union Trademarks.