What should I be doing now? Part 1 – To file or not to file?

What should I be doing now? Part 1 – To file or not to file?

The up-turn since the Brexit vote (23.06.16) in the number of UK trade mark and design filings is continuing apace, but does it really make sense? 
 
The Chartered Institute of Trade Mark Attorneys is lobbying for EU trade mark applications and registrations to be transferred automatically into UK equivalents after Brexit.  This option (known as “the Montenegro”) has found favour with the UK IPO, who know there is a mountain of work coming their way, and so welcome any proposals that look like they will save time and effort. 
 
However, “the Montenegro” is only one of at least eight options being considered and there is ongoing uncertainty about the timings and mechanisms by which EU trade marks will be revalidated in the UK after Brexit.  Meanwhile, risk-averse businesses are continuing to refille their entire EU portfolios as UK trade marks. They do not want to leave anything to chance.
 
Amidst all of this, we realized at the recent INTA meeting in Barcelona that UK attorneys are giving widely conflicting advice to trade mark owners and their representatives. 

 
Here is what we think:
 
 We are advising clients to file both EU and UK national applications for any new mark that is intended to be used both in the EU and the UK.  This seems to us to be the pragmatic approach, taking into account the desire for certainty, versus cost and risk.  It removes any need to worry about whatever system is put in place
(….if any…..) for dividing up EU trade marks after Brexit.

 With existing EU trade marks, for those who want certainty, refilling in the UK is also a good option.  The problem with automatic revalidation of EU marks in the UK if “the Montenegro” is adopted is that it is likely to provoke a scramble between owners of conflicting rights as to who has the dominant rights in the UK.  (Rights in the UK can be based on use as well as registration, so it is not as simple as just looking at the register). 

However, the position with existing marks is less clear cut than with new ones because newly filed replacement UK applications will only have infringement rights from their (new) filing dates.  Therefore, for some trade mark owners with existing (and especially old) EU applications and registrations, refilling now in the UK will not be attractive.  To borrow a phrase popular with trade mark examiners the world over “each case has to be considered on its merits". 

We encourage all of our clients and friends around the world to contact us if they are unsure what to do.

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