Brexit! What happens to my EU Trademark Registration?
As of this writing, CNN is reporting that there is no possibility that the “remain” proponents will prevail in UK’s Brexit vote. By now we all know that “Brexit” refers to Britain’s vote to exit membership in the EU. And now it appears the Brexit will occur.
In a February 2016 report, Wine Institute United Kingdom Trade Director John McLaren stated: “The United Kingdom has always been a receptive market for California wines, and a quarter of all U.S. wine exports by volume come to this country. Value increases are now out-stripping volume growth, with U.S. wine export value to the UK rising by 28% last year.” Historically, the UK has been a strong consumption market for wine, with no significant domestic production, and an active importer for wine from throughout the world. Thus, many wine brands are active in the UK market.
An EU trademark registration has always been incredibly appealing for wine producers, covering the 28 EU member states for a single filing fee, including major export markets such as the UK, Ireland, Germany and the Nordic member states. So the question is, if I have an EU trademark registration and the UK leaves the EU, what will happen to my protection in the UK? The short answer: we don’t know.
There are no established provisions in place as to how your EU trademark registration will protect you in the UK once the UK leaves the EU. We do know that there is a two year process during which the UK and the EU will negotiate to “unwind” the UK membership in the EU. The general belief is that during this time the UK will enact basic “grandfather” provisions by which EU trademark registrants can convert their EU trademark registrations into UK trademark registrations with priority rights consistent with those established in the EU trademark registrations. However, this is not a certainty, and even if it occurs what is unclear is what will happen when there may be conflicts between EU trademark registrations and UK trademarks. Also unclear is whether EU trademark applications filed after June 23, 2016 will extend any protections to Britain, and whether trademark applications which were pending at the time of the Brexit vote will have any effect in the UK. The worst part, however, appears to be that we will not have any clear answers to these questions for at least the next two years.
In the mean time, what is an EU trademark registrant to do? In all likelihood, as previously stated, there will be provisions established to extend the EU registration protection back into the UK. However, as we were told by one UK trademark attorney: “some clients have been filing UK double-ups for new marks”; meaning, anticipating the possibility of a Brexit and the uncertainty that it would create, parties have been filing UK applications simultaneous with EU applications, even though the UK was still a member of the EU at the time of filing. If you believe in insurance and have a vested interest for your brand in the UK market this is a logical approach given the uncertainty which trademark owners face.
At the very least, now that the Brexit is official, going forward any winery wanting prospective protection in the UK should not rely on an EU trademark application for such protection and should file directly in the UK instead of, or in addition to, filing in the EU.
If you would like to discuss potential strategies related to protection of your trademark in the UK following the Brexit, please contact us.