The Impact Of The Brexit Deal On IP Professionals And Trademark Owners

Lisa Wright,

For IP professionals and trademark owners, Brexit and the EU-UK Trade and Cooperation Agreement, agreed to on December 24, 2020, impacts both the right to access EU markets and the registration of trademarks. In this article, we examine what the Brexit deal will mean for IP professionals and trademark owners.

A pressing issue that has arisen post-Brexit, is that of non-cloned pending trademark applications. Most IP practitioners are already aware that pending EUIPO applications and pending WIPO applications designated EUIPO will not be cloned automatically by the UKIPO. However, these pending applications will retain their application date and the same application will be able to be re-filed in the UK until September 30, 2021.

This is important because it presents a risk for UK trademark clearance, as those trademarks have priority for a 9-month period. That is why we also take a data dive in this article and examine the trademark activity of the + 76,000 trademarks that were still pending at the end of the Transition Period on January 1, 2021 in the EUIPO — and identify the top filers, Nice Classes, and product descriptions of these EUTMs.

The Brexit Deal at a glance

The UK voted to leave the EU in 2016 and officially left on January 31, 2020. Under the terms of a Transition Period lasting until December 31, 2020, both sides agreed to keep many things the same in order to allow enough time to agree the terms of a new trade deal. The parties finally agreed the EU-UK Trade and Cooperation Agreement on December 24, 2020. Please find a copy of the Agreement here.

While the UK was an EU member state, UK companies could buy and sell goods and services across EU borders without paying taxes and there were no limits on the amount of goods/services which could be traded. Under the terms of the deal, that did not change on January 1, 2021, but to ensure that neither side held an unfair advantage, both parties had to agree to some shared rules and standards.

What does the Brexit Deal mean for IP professionals?

For British IP professionals and businesses, the Deal has some ramifications. According to Part 2, Section 7 “Legal Services'' of the Trade and Cooperation Agreement[1], businesses offering legal services will lose their automatic right of access to EU markets and will face some restrictions. According to Part 2, Chapter 5, Section 2 “Mutual recognition of professional qualifications' of the Agreement[2], there will no longer be automatic recognition of professional qualifications for attorneys (and many other professions such as doctors, architects, and chefs).

This means that rather than following one set of rules for the whole of the EU, UK businesses will now need to comply with the regulations in each individual country. As a result, it will be harder for people with qualifications gained in the UK to offer/sell their services in the EU.

Individuals will need to check each country's rules to make sure their qualification is still recognized. Further guidelines for arrangements on the recognition of professional qualifications can be found in the ANNEX SERVIN-6 to the Agreement.[3]

It should be noted that both the UK and EU have pledged to continue talks and try to improve access for the service sector in the future.

To learn more about the impact of Brexit on the IP industry please make sure to subscribe to our podcast. Chris McLeod, Chartered trademark attorney and Partner at Elkington and Fife LLP, past President of CITMA, member of INTA, and an active member of Pharmaceutical Trade Marks Group (PTMG), is interviewed in “Brexit Briefing”, an upcoming episode of TrademarkNow and Corsearch’s legal podcast, “Talkin’ Marks”.

During our Podcast, McLeod shares his insights on what the Brexit Deal really means for IP professionals and the impact of Brexit on IP. One of the main issues that McLeod addresses is the question of how challenging it has been for UK attorneys to create branding strategies over the last four years. You will discover how attorneys in UK firms have devised the best post-Brexit branding strategies and gain many more insights into the implications of Brexit on global trademark practice.

Please subscribe and tune into “Talkin’ Marks” and you will be notified as soon as “Brexit Briefing” is available!

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What the Brexit Deal means for trademark owners

As stated previously, from 1 January, 2021 EUTMs no longer protect trademarks in the UK. According to the UKIPO, an impressive 1.4 million EU registered trademarks and seven hundred thousand EU registered designs were converted to comparable UK rights at the end of the Transition Period on 1 January, 2021.

However, at the time of writing, a small volume of just over seventy-six thousand EU trademarks were still pending at the end of the Transition Period. Businesses, organizations, or individuals that had pending applications for a EUTM at the end of the Transition Period will be able to file UK registrations within a nine-month period — by 30 September, 2021 — and claim the same date and protections in the UK as they have for their EUTM.

As ever with trademark law, owners and applicants should appoint a representative who can advise on UK comparable rights and follow the legal opinion on proactively maintaining their rights with a robust trademark watch and enforcement strategy. If you would like to learn more, Part 2, Title V of the Trade and Cooperation Agreement [4] covers intellectual property with Chapter 2, section 2 “Trade marks[5] detailing all pertinent information for trademark owners.

ExaMatch ™ data dive

Stolfi-TM-Graph

We took a data dive and ran some Nice Class analysis on these pending marks with ExaMatch ™, our preliminary trademark search and business intelligence tool, which gave us our search results in less than 15 seconds!

We discovered that the highest volume of pending trademark applications is found in Nice Class 9, Electrical and Scientific Devices (10 %), and Class 35, Advertising and Business (9.6%). This was followed by Class 42, Research and Development (6.5%), Class 41, Education and Entertainment (5.2%), and Class 25 Clothing (4.7%).

Thoughts to the future

The brand establishment and brand protection industry is not alone in facing post-Brexit challenges. As with all matters relating to Brexit, there are still many complexities and uncertainties surrounding all industries.

However, with an informed post-Brexit brand strategy and robust trademark portfolio management in place, trademark owners have nothing to fear — and some may even benefit. SMEs with a primarily UK-specific business could see an upside, as earlier EU trademarks will gradually cease to constitute prior conflicting rights.

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*This is an informational opinion article of Lisa Wright of TrademarkNow, a Corsearch company. The views and opinions expressed in this article are those of the author and do not necessarily represent official policy or positions of Corsearch or its clients.

[1] Official Journal of the European Union, 2021. TRADE AND COOPERATION AGREEMENT BETWEEN THE EUROPEAN UNION AND THE EUROPEAN ATOMIC ENERGY COMMUNITY, OF THE ONE PART, AND THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND, OF THE OTHER PART. p.127.

[2] Official Journal of the European Union, 2021. TRADE AND COOPERATION AGREEMENT BETWEEN THE EUROPEAN UNION AND THE EUROPEAN ATOMIC ENERGY COMMUNITY, OF THE ONE PART, AND THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND, OF THE OTHER PART. p.112.

[3] Official Journal of the European Union, 2021. TRADE AND COOPERATION AGREEMENT BETWEEN THE EUROPEAN UNION AND THE EUROPEAN ATOMIC ENERGY COMMUNITY, OF THE ONE PART, AND THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND, OF THE OTHER PART. p.782.

[4] Official Journal of the European Union, 2021. TRADE AND COOPERATION AGREEMENT BETWEEN THE EUROPEAN UNION AND THE EUROPEAN ATOMIC ENERGY COMMUNITY, OF THE ONE PART, AND THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND, OF THE OTHER PART. p.139.

[5] Official Journal of the European Union, 2021. TRADE AND COOPERATION AGREEMENT BETWEEN THE EUROPEAN UNION AND THE EUROPEAN ATOMIC ENERGY COMMUNITY, OF THE ONE PART, AND THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND, OF THE OTHER PART. p.146.