Brands should review trade mark portfolio to identify post-Brexit risk of revocation, says expert

This is part of Out-Law's series of news and insights from Pinsent Masons experts on the impact of the UK's EU referendum. Watch our video on the issues facing businesses and sign up to receive our 'What next?' checklist.

Adrian Murray of Pinsent Masons, the law firm behind Out-Law.com, said some EU trade marks might be "susceptible to post-Brexit non-use challenge".

"It is important for companies to review their trade mark portfolio to identify registrations that may become susceptible to post-Brexit non-use challenge," Murray said. "Trade mark registrations can be challenged if that trade mark has not been used within a jurisdiction for five years. For brands which are used exclusively in the UK, post-Brexit, that use may not be enough to save an EU-registered trade mark right. Therefore an EU trade mark which has only been used in the UK might be susceptible to challenge post-Brexit."

Murray was commenting during a recent webinar hosted by Pinsent Masons on the topic of Brexit and what the effect will be of the UK leaving the EU on IP.

Murray said it is as yet unclear what arrangements will be put in place to ensure EU trade marks continue to provide protection in the UK post-Brexit. He said that existing EU trade marks will continue to apply in the remaining EU countries but that the UK coverage of those registrations may have to be converted into UK-only national marks, though the mechanism via which this should be done has yet to be determined.

In a new statement on 'IP and Brexit', the UK's Intellectual Property Office (IPO) confirmed that the issue has still to be resolved.

"We recognise that for EU trade marks, users will want clarity over the long-term coverage of those rights," the IPO said. "The government is exploring various options and we will be consulting users of the system about the best way forward. Even after the UK leaves the EU, UK businesses will still be able to register an EU trade mark, which will cover all remaining EU member states."

"In addition, the UK is a member of the international trade mark system called the 'Madrid System', which allows users to file one application, in one language, and pay one set of fees to protect trade marks in up to 113 territories including the European Union," it said.

The IPO issued a similar statement in respect of the "long-term coverage" of registered Community design rights.

Murray said: "Given that there is still uncertainty over how the conversion route will work and what it will cost it is advisable, for clarity's sake, for businesses to apply simultaneously now for EU-wide and UK protection."

During the webinar other experts from Pinsent Masons and adviser Douglas Alexander, a former Europe minister and shadow foreign secretary, addressed a number of issues, including in relation to the future of the unitary patent and Unified Patent Court (UPC) regime.

Alexander said: "My personal view…is that without a guarantee of continued British participation post-Brexit the UK government will not ratify the UPC at the moment since being forced to leave the system would only increase the uncertainty and indeed compromise the UK's subsequent negotiating position."

"I think in some ways the idea of immediate ratification and then subsequent negotiations is the least likely of the outcomes in relation to Britain's attitude to the UPC. It may be…that the United Kingdom government seeks to encourage the involvement of other European Patent Convention convening states, the non-EU states if you like, Switzerland, Norway and ultimately the United Kingdom to engage within the UPC," he said.

"Whether that is something that our colleagues in France, in Germany and elsewhere will contemplate I think again is going to be directly affected by politics that extend far beyond the IP landscape. In that sense I think it's only sensible to contemplate what the scenarios are for the UPC as it emerges as to what the broader attitudes towards the European Union are towards Britain's negotiating position as it emerges in the coming months," Alexander said.

The IPO addressed the issue of Brexit and the UK's participation in the UPC framework in its statement.

It said: "The UK remains a contracting member state of the Unified Patent Court at present. We will continue to attend and participate in UPC meetings in that capacity. There will be no immediate changes."