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Brexit deal or no deal, protect your trademarks now

Stephen Sidkin, partner at fashion law firm Fox Williams explains why brands should review their trademark portfolios now to ensure they are protected ahead of the UK leaving the European Union.

Each fashion brand is unique. Its trademark is the sign by which it is known. But some fashion brand owners seem to regard trademarks as a “register and forget” exercise: do it once, pay the renewal fees and move on.

This is equally the attitude when it comes to registration outside the UK. However, since April 1996, there has been the ability for brand owners to register their mark as a European Union mark and obtain protection throughout the trading bloc.

Where registration has been obtained for an EU mark, this has put brand owners in a potentially difficult situation. This is because, if the draft withdrawal agreement of the UK from the EU is finalised in October 2018, and then approved by the UK parliament, the European parliament and the EU Council, then EU-registered trademarks will continue in force until 31 December 2020.

If no deal is reached, then from 30 March 2019 brand owners will no longer have protection in the UK

After this date, if this is agreed, EU marks will automatically be converted to comparable UK marks. In effect, the UK marks will be clones of the EU marks (same dates, same goods/services, same renewal date). Brand owners will then have an EU mark (covering all then 27 member states of the EU) and a UK mark (covering the UK).

But if no deal is reached in October then, given that there will be insufficient time to put a fresh withdrawal agreement in place before 29 March 2019, EU trademarks will cease to have effect in the UK from 30 March 2019.

What does this mean for brand owners?

If no deal is reached, then from 30 March 2019 brand owners will no longer have protection in the UK. This will leave them vulnerable to third parties or trademark trolls – or both – that apply to register UK marks for brands. They will have to rely on earlier use in the UK to prevent the “trademark trolls” succeeding with their applications for registration. Proving an unregistered right is much harder than relying on a registered right.

What can brand owners do?

Brand owners should be looking at reviewing their trademark portfolios now to ensure they are sufficiently protected if no deal is reached by October. For example, brand owners for whom the UK is an important market should consider applying to register in the UK now to ensure that they are sufficiently protected.

Proving an unregistered right is much harder than relying on a registered right.

A UK trademark is relatively cheap, and having the mark registered will be protective if no deal is reached. Last month, the UK Intellectual Property Office confirmed that UK filings for trademarks are up 22%. It suggests, therefore, that some brand owners are considering UK applications as a priority.

Brand owners should also consider at this time whether their protection in the EU and UK sufficiently protects them going forward. For example:

  • Is the mark still being used in the current format registered or has the logo changed?
  • Does the mark still cover the goods and services of interest, and, if not, should consideration be given to new applications to ensure that the marks have sufficient protection?
  • Are there any agreements in place that restrict the brand owner’s use or registration in the UK?
  • Are the companies with which the brand owner entered into agreements – for example, for the licensing of the mark – still in business, and is the agreement still valid? If modifications are required, now is the time to negotiate.

The intellectual property community is waiting to see what happens in relation to the draft withdrawal agreement but, in the meantime, now is the last best opportunity for brand owners to review their current rights, their needs going forward, and whether the UK is an important territory to ensure they are protected.

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