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Brexit and trade marks: you need to act now to protect your business

First publishedin Aggregates Business Europe
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The process of the UK leaving the EU has created uncertainty in a number of areas. One area which aggregates businesses should be alive to is what will happen to trade marks. Ben Travers, head of the intellectual property team at Stephens Scown LLP, explains the issues.

EU trade mark and design owners, of which there are many in the aggregates sector, must act now to ensure that their intellectual property is protected once the UK leaves the EU. Since the mid-1990s, the system around trade marks and design rights has been harmonised to encourage businesses to use the EU system, as opposed to national alternatives. It is a system that has worked well, offering cost-effective protection across all EU member states by way of a single filing.

However, things are about to change and businesses that have acted in good faith in engaging with the EU system for over 20 years could be left out in the cold if they don’t take action to protect their trade marks and design rights now.

Trade marks essential for business growth

The reason this matters so much is because trade mark registrations for key products and services, and even business and trading names, are essential for high growth businesses. Securing a trade mark results in one of the most powerful rights a business can buy, a legal monopoly over the badge of origin that separates one business from another. It is a valuable way to protect a business’s hard-won reputation.

For aggregates businesses trade marks may cover business names, product lines, group business names, strap lines and logos: basically, any public-facing part of your branding or identity. It is important to remember that trade marks can take priority over company names, domain names and trading history. If you want a monopoly to ensure others cannot use a mark, you must register it.

EU trade marks and designs will no longer cover the UK

The European Union Intellectual Property Office (EUIPO) has issued a notice to holders of EU trade marks, stating that unless there is an agreement to the contrary after Brexit (from 30 March 2019), EU trade marks and designs will no longer cover the UK.

The notice, which was issued on 1 December 2017, says: “Subject to any transitional arrangement that may be contained in a possible withdrawal agreement, as of the withdrawal date, EU rules on EU trade marks and Community designs will no longer apply to the United Kingdom.”

It goes on to state: “As a result, EU trade marks and registered Community designs registered in accordance with Union law as well as unregistered Community designs made available to the public in the manner provided for in Union law before the withdrawal date will continue to be valid in the EU27 member states but will no longer have effect in the United Kingdom as from the withdrawal date.”

This is a stark reminder that without an agreement, holders of EU trade marks will be left unprotected in the UK after Brexit. At present, there is no agreement to the contrary.

There is a very real possibility that opportunistic businesses will use this as a chance to sweep up trade marks and design rights that are no longer enforceable. We expect to see many historic issues that have been settled arise again in this new landscape.

Trade marks and domain names

Trade marks take priority over domain names. This means that if someone uses your trade mark as part of their internet domain name, it can be seen as a trade mark infringement. This ‘cybersquatting’ can mean that you are entitled to damages.

However, the uncertainty over the trade mark landscape post-Brexit raises the very real possibility that cybersquatting could increase, without the current recourse to redress the damage it causes. This is especially the case in light of the new domain extensions which have been introduced over the years.

Take action now

Owners of registered EU trade marks and designs who are worried about protection in the UK should file a UK application as soon as possible or risk their intellectual property being open to exploitation by others. Of course, in due course transitional provisions may be implemented but why take the risk that your control over your reputation could be lost, when taking simple steps now will avoid the issue.

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Stephens Scown

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