Trade mark filing strategy post-Brexit

At the end of December 2020, the Brexit transition period ends and the UK will drop out of the EU trade mark registration system. Plans are in place to enable those who have existing EU registrations to continue to receive protection in the UK, but what does this mean for future trade mark applications?

For all businesses who trade around Europe this means that it will no longer be possible to rely on a single EU application to cover both the United Kingdom and the twenty-seven countries which remain in the EU; it will be necessary to file both EU and UK applications (and to consider filing in non-EU countries, notably Switzerland, Norway and Turkey). For UK-based companies, this change is likely to push trade mark applicants towards making use of the Madrid Protocol.

There are two routes to obtain trade mark protection in most territories; it is possible to file a direct national application (or a direct regional application such as an EU application, a Benelux application, a Gulf Cooperation Council application, an OAPI application etc.); for some territories it is possible to file a Madrid Protocol application with WIPO and to designate various territories. Most, but not all, commercially important territories, including the EU, can be designated in a Madrid Protocol application.In order to file a Madrid Protocol application it is necessary first to file a home application which, for a UK company, will usually be a UK trade mark application. Thereafter the Madrid Protocol application can be filed and based on the UK application. There is a fairly high base cost to file a Madrid Protocol application designating one territory (e.g. the EU) but additional territories may be designated at the same time at a relatively low marginal cost.

This means that for UK applicants who wish to seek protection in the EU and also at least a couple of additional territories, it is likely that the Madrid Protocol route will be cheapest. As a result, we expect an increase in the filing of Madrid Protocol applications, based on UK application or registrations, designating the EU and other territories. Applicants may well start to include Switzerland, Norway and Turkey which are frequently omitted due to the cost of direct national applications in those countries. That being said, it is important to appreciate that the Madrid Protocol has a number of disadvantages:

• It essentially involves filing applications in other countries without taking local advice, leading to risks of unexpected issues which would have been avoided with direct national applications.
• It is inflexible. There are limitations on who may file a Madrid Protocol application.
• Obtaining protection is relatively slow in contrast to some direct applications (e.g. EU applications) although it is quicker than the application process in some other territories.
• It is not possible to file divisional applications for different goods and services meaning that it is not possible to obtain a statement of grant of protection for some goods or services in a territory while objections remain to goods and services in other classes.
• If you wish to assign the registration to two different parties it is necessary to first file a divisional application.
• There are some additional difficulties when filing in the US, for example it is not possible to file on the basis of actual use in the US by way of the Madrid Protocol system.
• Still further, when objections are raised, there is sometimes only a short period to respond. This is frequently a problem, for example for designations of China where objections have a 15 day response period.

In short, with the departure of the UK from the EU, many businesses will find that they wish to file both UK and EU trade mark applications and those who wish to seek protection in a number of other territories are likely to wish to at least consider using the Madrid Protocol.