Dubbed “Brexit,” the United Kingdom (“UK”) decided by national referendum in 2016 to separate from the European Union (“EU”). However, the British Parliament has refused to approve an agreement for orderly withdrawal, so the UK is likely to leave the EU on March 30, 2019 without any terms of separation. Many brand owners have registered their marks through the EU Trade Mark (“EUTM”) system, previously known as the Community Trade Mark (“CTM”), with the expectation that protection extends to the UK. Under the current “guidance” issued by the UK, owners of EUTM registrations should receive an automatic “clone” registration in the UK, which will carry over equivalent protection and seniority. But, pending EUTM applications, will NOT be “cloned”; applicants should be offered a grace period within which to file UK applications claiming the same protection and seniority. Similar provisions are planned for International Registrations designating the EU. Despite the strong expectation of UK legislation in alignment with the guidance, trademark owners should consider immediate action to secure UK trademark rights prior to the official Brexit date. Note: Patent rights in the UK should be relatively unaffected by Brexit because the European Patent Office (“EPO”) is not a European Union institution.
Brexit Bust – What Now for Owners of European Trademarks?Written by John Malloy, III
As the Partner overseeing the Firm’s Intellectual Property Litigation and International Tradmark Portfolio groups, Mr. Malloy is Board Certified as an Expert in Intellectual Property Law and concentrates his practice on Trial and Appellate Litigation. He also focuses on International Portfolio Management, filing trademark applications and directing enforcement proceedings around the globe. Mr. Malloy taught for nearly a decade as an Adjunct Professor of Intellectual Property Law at St. Thomas University Law School. He earned his bachelor’s degree from Vanderbilt University and his law degree from the University of Miami. During his tenure as the Chair of the International Trademark Association’s Model State Trademark Bill from 2003 to 2007, Mr. Malloy oversaw the passage of trademark legislation in a half dozen states and personally spear-headed the enactment of Florida’s present trademark statute, which became effective in 2007. In 2009 Mr. Malloy was named the Chairman of the DCBA Intellectual Property Committee.
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