Legal updates and opinions
Post Author
News / News
B= BREXIT – ADVICE TO BRAND OWNERS
By Donvay Wegierski, Director
The initial Brexit date of 29 March 2019 was re-scheduled to 31 October 2019 – deal or no deal.
Our advice to date concerning trade marks is that separate trade marks should be filed in the UK in addition to the EU to avoid the inevitable administrative delays at the UK Intellectual Property Office (“UKIPO”) in the event of a “no deal” Brexit. This is particularly so if the UK is a trading partner and brand owners are advised to review current UK and EUTM trade mark portfolios and if there is no separate UK mark consider the following:
| A “DEAL” BREXIT | All EUTM trade mark registrations will be considered in force and effect in the UK with a transition period until at least December 2020. | |
| A “NO DEAL” BREXIT | EUTM Registrations | Registrations will automatically replicate to the UK as “comparable trade marks (EU)” identifiable by UK009. No further action is required, no additional official fees apply. |
| EUTM Applications | It will be necessary to file an application to the UKIPO for the grant of a UK replica application on payment of a fee. |
|
| Opposed EUTM’s | It will be necessary to file an application to the UKIPO for a UK replica application on payment of a fee. | |
| Pending cancellation application against an EUTM | A new cancellation action may be required in the UK against the “comparable trade marks (EU)”. | |
| Renewals | Two separate renewals will apply for the EUTM and the “comparable trade mark (EU)” when due. | |
| Non-use cancellations |
A trade mark is vulnerable to cancellation for non-use by any interested third party if it has not been used for a period of five years or longer after registration. Currently, as an EUTM includes the UK any use of the mark within the UK could assist in defending a non-use cancellation against an EUTM. On Brexit, use in the UK from then will not be taken into account which brand owners should be aware of. It is not uncommon to refile trade marks that are vulnerable to cancellation, albeit it defensively. |
*A EUTM covers all 28 member countries of the EU, namely Austria, Belgium, Bulgaria, Cyprus, The Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the UK.
Should you require any clarity on the above or assistance with reviewing your current position in the EU please contact our Intellectual Property Team.
Latest News
A brief overview of the Small Claims Court (2026 update)
by Dakalo Singo, Director and Head of Pro Bono What is the Small Claims Court? The Small Claims Court ("SCC") [...]
Success of the South African Business Rescue Process – Positive news for the restructuring of distressed companies
by Dr. Eric Levenstein, Director and Head of Insolvency & Business Rescue Dr Eric Levenstein unpacks the legal significance of recent [...]
South Africa’s private equity market finally has a liquidity market: The growing market for secondaries
by Dylan Cunard, Director 1. Introduction 1.1. For much of the past two decades, the conversation in South Africa’s private [...]
Will secondaries solve liquidity issues in South Africa’s private equity market?
by Dylan Cunard, Director A multi-billion dollar revolution in global private capital could arrive in South Africa. South Africa’s private [...]
Procedural certainty in business rescue: Competing commencement processes
by Eric Levenstein, Director and Head of Insolvency & Business Rescue, Brandon Starr, Senior Associate and Clio Patricios, Candidate Attorney [...]
When silence becomes complicity: Constructive dismissal, workplace bullying and the cost of doing nothing
by Bradley Workman-Davies, Director Constructive dismissal remains one of the more difficult claims to prove in South African labour law. [...]
