Legal updates and opinions
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
FICA: Proposed changes to Public Compliance Communication 50 and Directive 3 previously issued by the Financial Intelligence Centre
by Sandiso Dhlomo, Associate and Nhlonipho Mthembu, Candidate Attorney reviewed by Tracy Lee Janse van Rensburg On 14 March 2025, [...]
Remedies in respect of decisions made under the MPRDA: there are no quick fixes
Mineral and Petroleum Resources Development Act (MPRDA) When it comes to appealing against or reviewing administrative decisions under the [...]
Breaking News as the Minister of Employment and Labour publishes much anticipated Sectoral Targets and accompanying Regulations
by Anastasia Vatalidis - Director, Kerry Fredericks - Director and Gracie Sargood - Candidate Attorney The Employment Equity Amendment Act [...]
A Guide to The Johannesburg High Court – dedicated Insolvency Court Project
Published On: April 11th, 2025 by Eric Levenstein, Director and Head of Business Rescue & Insolvency, Amy Mackechnie, Senior Associate [...]
Whether non-parties to a collective agreement can refer a dispute about the interpretation and application of the collective agreement?
and Pumelela Mniki, Candidate Attorney The issue of whether non-parties to a collective agreement can declare a dispute about its [...]
Note On The Final Nedlac Report On The Labour Law Reform Process
and Anna Tchalov, Candidate Attorney and Gracie Sargood, Candidate Attorney Following negotiations between organised business, organised labour and government, the [...]
