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Brexit Update - Hidden Trademark Costs for Everyone

Brexit Update - Hidden Trademark Costs for Everyone

It is still not clear how Brexit will affect trademark rights in the UK and other jurisdictions. Both the EU and the UK Intellectual Property Office (UKIPO) favor the “Montenegro” option under which all EUTM applications and registrations would automatically become UK applications or registrations.

At first glance, this all sounds good, and probably would be the best outcome; but there are substantial hidden costs for all concerned: the trademark owners, the agents and most of all, the UKIPO, in spite of the EU’s somewhat brave wish that “the implementation of this principle should not result in financial costs for the holders of intellectual property rights…”

Applicants from any jurisdiction worldwide who filed for EUTMs and who did not use a UK law firm or agent may need to retain a UK agent to provide an address for service, and to take over the prosecution of pending applications and oppositions.

Agents in the UK will have to load the EUTM cases into their docketing or management systems, and spend time reviewing the files (what files?) for the ex-EUTM applications and oppositions. How much of this billable?

But the biggest burden will fall on the UKIPO. On the great/awful Brexit day they will inherit over a million registered and pending marks to load into their database, including about 70,000 pending applications. This would double the size of the UKIPO trademark database.

But it may be too soon to worry. No-one yet knows what Brexit will look like, and the debate continues to be acrimonious. Meanwhile local UK trademark filings are up 20% this year as people start to hedge their bets.