East Anglian specialist warns of post-Brexit threat to trade mark protection

Bill Ward of Ward Trade Marks.

Bill Ward of Ward Trade Marks. - Credit: Archant

Britain’s departure from the European Union could leave many British companies without protection for their trade marks, according to a specialist based in the region.

Trade mark protection typically covers logos but can also include strap lines, words and other visual ways of representing a brand.

Failure to register trade marks correctly in the different countries where a firm operates can result in them being used, or even owned, by a competitor.

Bill Ward, of Ward Trade Marks, which has offices in Bury St Edmunds and Cambridge, says that owners of UK trade marks will not be affected as their rights will remain in place post-Brexit.

Owners of EU trade marks are also unaffected for the time being but, when the UK finally leaves the EU, these will – as things currently stand – only apply within the remaining 27 member states and not in this country.

“The irony could be a cruel one,” says Mr Ward. “Many businesses only have EU trade marks and rely on these to protect them in the UK. So after Brexit these rights will need to be ‘extended’ so that rights holders are able to enjoy continued registered trade mark protection in the UK as well as the remainder of the EU.

“The question is, what transition mechanism will be implemented to make this happen? A number of scenarios are being considered with the various stakeholders which include the UK Intellectual Property Office, the UK Government and the Chartered Institute of Trademark Attorneys.”

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For now, says Mr Ward, there is “a conspicuous lack of clarity” on the likely outcome, effectively leaving businesses with two choices – either adopt a “wait-and-see” approach and then take whatever action is required once details of the future protection regime become clearer or take the lower-risk option and apply for a UK trade mark now.

“This may add more cost but, if an opportunity arises to review a company’s activities now and if the existing EU trade marks are not sufficiently wide to cover all of the current activities, now could be the time to apply for a UK trade mark with a widened specification,” he says. “Firms will not be able to widen the scope of their trade mark coverage during any transition process.”

There is also a further complication, he adds: “For companies thinking of opening up new export markets in the EU, an EU trade mark is a good solution, but you will need to think about how extensive your trading plans are in the future 27 state EU.

“If your plan is to trade between the UK and just one other EU country, as soon as the UK is out of the EU your EU trade mark may be open to challenge because the amount of trade being conducted may not be deemed to be sufficient ‘use’ of the trade mark.

“This is a very complicated area and professional advice is essential to guide you through this decision-making process.”