By: Alan M. Kindred, Esq.

Voters in the United Kingdom (“UK”) recently voted in a referendum to secede from the European Union (“EU”). It is now up to the British government to invoke, or not to invoke, Article 50 of the Treaty of Lisbon to begin the two-year withdrawal process.

If the British government does invoke Article 50, the UK will eventually no longer be an EU member state. What does that mean to U.S. owners of EU trademarks?

The answer is that as the British government makes a decision on the invocation of Article 50, we will have more definitive information. In the meantime, the UK will remain part of the EU and EU trademarks will remain effective and enforceable in the UK.

Assuming that the British secession from the EU (“Brexit”) is put into place by the British government, there will come a time when EU trademarks will no longer be enforceable in the UK, unless the British government makes transitional laws to include the seniority and enforceability of EU trademarks in the UK as of a certain date. Another alternative for the British government would be to set a deadline by which time EU trademarks must be applied for in the UK in order to maintain priority and seniority.

Three other European nations that never joined the EU are Norway, Liechtenstein and Iceland. These three countries, however, are part of the European Economic Area (“EEA”). The other part of the EEA is the EU itself. Switzerland is neither an EU nor EEA member, but is part of the European single market, meaning that, at this time, Swiss nationals have the same rights to live and work in the UK as other EEA nationals.

As Brexit becomes finalized, it remains to be seen whether the UK will:

  • Be (or remain) part of the EEA, or not;
  • End up in the same or similar position to where Switzerland is today, with respect to other European nations; or
  • Whether the UK just “goes it alone.”

For Leech Tishman’s clients who currently own EU trademarks, we are recommending a “wait and see” approach, to evaluate what the British government will do – if anything – over the next two years or so, to implement Brexit. Some clients, just for safety in the present situation of uncertainty, may wish to file UK trademark applications now. For clients making new trademark applications in European countries, we recommend separate applications for the EU, UK, Switzerland, Norway, Lichtenstein, and Iceland.

The U.S. is a party to a treaty that makes filing trademark applications in all those countries cost-effective, by way of one application for all the above jurisdictions, in English, and with payment of filing fees in U.S. currency.

For questions about EU Trademarks in regards to Brexit, please contact Alan M. Kindred, a Partner in Leech Tishman’s Intellectual Property and Litigation Practice Groups.

Alan M. Kindred is based in Leech Tishman’s California offices, including Pasadena and Upland, and can be reached at 626.796.4000 or akindred@leechtishman.com.

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Leech Tishman Fuscaldo & Lampl is a full-service law firm dedicated to assisting individuals, businesses, and institutions. Leech Tishman offers legal services in alternative dispute resolution, bankruptcy & creditors’ rights, construction, corporate, employee benefits, employment, energy, environmental, safety & toxic torts, estates & trusts, family law, government relations, immigration, insurance coverage & corporate risk mitigation, intellectual property, internal investigations, international legal matters, litigation, real estate, and taxation. Headquartered in Pittsburgh, PA, Leech Tishman also has offices in Chicago, Los Angeles, New York and Wilmington, DE. For more information call 412.261.1600 or visit us at www.leechtishman.com.