There is a risk that the UK will definitely be leaving the EU and cannot retain the privilege of EU registrations being enforceable in the UK.

The practice has always advocated against relying on an EU registration to protect a mark in the UK in any event, because EU registrations have procedural drawbacks. For one thing, they are at risk of what’s called The Alicante Torpedo. This practice has therefore always advised protecting UK trade marks on the UK register, which has always been independent of the EU register. The Brexit impact on clients of this practice as far as UK protection is concerned is therefore nominal, and this note is offered more for visitors to this site who want general information on Brexit trade mark matters than for existing clients.

If you are a UK business who has only ever obtained EU registrations for your marks in the UK, can you enforce post-Brexit your EU registration here in the UK? Probably not, because use in a country which is now out of the EU shouldn’t count towards proving use of a mark in the EU. It’s against the principles of the EU system [there has been a long standing treaty between Germany and Switzerland that use of a mark in Switzerland would be deemed use of that mark in Germany; but the European Court of Justice ruled back in 2014 that, because Switzerland was not part of the EU and even though is part of the EEA, use in Switzerland would not count towards proving use of an EU registration; a German registration, yes, but not an EU registration]

Should UK businesses therefore arrange to get their marks transferred from the EU register to the UK register? Well, there is a transfer process, called “conversion”. But: you can only activate it if you “surrender” your EU registration, because, as the EU objective was to render the national registers obselete, the EU wanted there to be a disincentive to requesting a transfer of a mark to any national register. Losing your EU registration is therefore a drawback to activating conversion, not so much of a drawback if you have only ever used your mark in the UK. But, it is a big drawback if you were hoping one day to expand out to other countries in the EU, or have such small sales in EU countries that they did not justify the high overhead of obtaining individual registrations per country.

So, the Brexit negotiations need to put in place a change of law, so that EU registrations can be converted to the UK but still stay alive on the EU register? Yes. But it’s not as simple as it sounds however, because it’s not fair to those people who had only ever sought registration on the UK register to suddenly have all these extra marks from the EU system leapfrog in front of theirs. Especially if these EU marks, if had they been originally applied for on the UK register, would have been refused by the UKIPO. There’s been talk, to avoid “swamping” of the UK register, of requesting an additional payment by a certain deadline and signing a declaration, but this creates difficulties for searching the register - it’s too easy for anyone to look in the wrong place to find out whether any particular EU registration was pulled across to the UK or not and paid the right fee or not, by the right deadline or not, etc. And it would be hard enough for attorneys to get this right, let alone those members of the general public who would not have a clue where to look, or even that they had to look for such a detail.