Brexit & Your Trade Marks – Some Practical Questions Answered (Guest Post from UK Firm HGF)

We found this update from the UK firm HGF ( www.hgf.com ) helpful, and thought you might, too — so we asked permission to re-post it here.  Enjoy!  P.S. Since we’re lawyers, we have to mention that HGF is not affiliated with Drinker Biddle & Reath LLP, and the views expressed in this post are those of HGF, and not those of Drinker Biddle & Reath LLP or its clients.– DBRanding® Blog Editors

You will no doubt have received many updates from IP law firms discussing the potentially new landscape for IP rights in the UK and EU in the longer term. Some are long, some short, some academic, but maybe not all practical.

The following briefing answers some of the more practical questions and concerns around managing your trade mark portfolio in light of Brexit. With change comes opportunity, and we at HGF are here to help you maximise that opportunity. We do not claim to know all that will transpire in the next few years come Brexit, no one does, but we hope these initial practical pointers below will help you along the way.

As a European firm of intellectual property specialists with locations in both the UK and mainland Europe, HGF will continue to offer a fully integrated team of professionals in the EU covering not only trade marks, but patents, designs, contentious and non-contentious IP law.

What about renewals and seniority claims relating to UK and EUTMs?

Although making seniority claims from UK trade mark registrations in relation to EUTM registrations resulted in considerable renewal cost savings, we would advise not go down that route at this point.

If separate UK and EUTMs exist for the same mark, it may be advisable to renew and maintain them separately from now on.

As noted above, there will undoubtedly be transitional provisions in place to convert existing EUTM registrations into UK trade marks.

What about trade mark assignments, licences and agreements covering the EU?

Any new agreements containing clauses which regulate the ownership and use of trade marks in the EU should consider the territorial scope of the agreement, in particular, how the EU is defined at the date of the agreement. Parties to existing agreements may want to review terms once the situation regarding EUTM conversion has been established – HGF can assist you with the review of any EU trade mark agreements.

Can HGF continue to act as my EUIPO trade mark representative?

Yes. HGF attorneys EUIPO rights of representation have not changed in any way. Until such time that the UK formally leaves the EU, HGF attorneys will continue to have exactly the same rights of representation as they do at present. Even after formal EU exit, HGF will continue to include qualified European Trade Mark Attorneys with full, unfettered rights of representation – there will be no break in service or representation at any point in time.