Impact of ‘Hard-Brexit’ plan on Trade Mark Protection

Question

Intellectual Property Law: What will be the likely impact of Theresa May’s ‘Hard-Brexit’ plan on Trade Mark Protection in the UK?

Answer

The impact of Brexit on national trade marks depends on whether there is a ‘Hard-Brexit’ (where the UK ceases to have anything to do with the EU) or whether it re-joins the European Economic Area. National trade mark law is harmonised by a Directive which applies to the EEA, meaning that only in the event of a Hard-Brexit will the UK cease to be obliged to keep national trade mark law harmonised with the EU, though the law will remain the same unless and until Parliament amends the Trade Mark Act.
The position is rather different with respect to EU Community Trade Marks, which have the potential to be left in a state of chaos regardless of whether or not there is a Hard-Brexit for two reasons. Firstly, the Trade Mark Regulation does not apply to the EEA, so regardless of whether UK re-joins the EEA, EU Trade Marks will cease to have effect in the UK unless some legislation were implemented recognising their continued effect or granting a national mark in their place.
Secondly, many marks will become vulnerable to revocation for non-use. Under Article 15 of the Regulation, EU Marks not put to genuine use in the Community for a period of five years are liable to be revoked. EU trade marks which rely on UK use to stave off such a revocation attack would fail to satisfy these provisions. The same may be true of EU trade marks that are converted into national trade marks, as these might need to rely on use outside of the UK to stave off a non-use attack under national law. This will be harder to deal with under a Hard-Brexit settlement, as European leaders are less likely to grant a grace period for marks used in the UK.

References

Table of Legislation

Directive 2008/95/EC

EEA Agreement

Regulation (EU) No 2015/2424

Trade Marks Act 1994

Website

Sims A, ‘What is the difference between hard and soft Brexit? Everything you need to know’, (Independent, 3 October 2016) accessed 22 October 2016