Trade mark protection in the EU: still worth it post Brexit?

If you are looking to register a trade mark for your brand, EU wide protection may seem a useful prospect. However, it is unclear how effective this level of protection will be now Mrs May has invoked Article 50.

It is important to first stress that nothing will change overnight. Brexit negotiations have been predicted to take at least 2 years, if not longer, therefore until all the details have been finalised, there will be no major changes to the system.

However, it is important to consider how things may change in the future and how this may affect the protection of your brand in the future.

EU Trade Mark as it stands

At present, you can submit a single application to the EU Intellectual Property Office to register a trade mark for protection in all 28 EU member states, including the UK. An application for one trade mark in one class of goods or services is €850, with an additional charge of €50 for each subsequent class.

The Trademarkroom can assist you with this application, ensuring you understand every step taken and are completely up to date on the whole process, confident in the knowledge that your application is being handled by the experts. Our fees are £350 plus VAT.

Protection moving forward

As highlighted before, the position explained above will not be changing any time soon however as a brand has longevity, it is important you are aware how your protection may change.

At time of writing, there has been no confirmation of exactly how the EU trade mark will function when the UK has officially left the EU, however it is likely that the EU trade mark will function as it does now but you will no longer be able to rely on it to have protection in the UK. It is thought that those EU trade mark owners who do not have an additional corresponding UK trade mark will need to submit this application to ensure there are no gaps in their brand protection.

It is thought there will be a time period in which these applications can be made before the removal of UK protection under the EU trade mark but as said before, this is not been confirmed.

Another aspect of this change that will need to be considered in genuine use. A requirement of the continuing protection is that a mark has genuine and substantial use in the EU as a whole. While this does not require use in all member states, use in one member state has been previously debated as not enough to show genuine use. This especially applies if this member state was the UK and it is removed from protection.

If you have an existing mark in the EU but are unsure if your use of it at present is enough to satisfy this requirement, please contact The Trademarkroom team who can give you more in depth guidance on any steps you can make to change this.

While it may seem that these changes do not need consideration for a while, it is important to stay one step ahead as the future is still so unclear.

By Ellis Sweetenham