Fiona Boswell

Director and Solicitor, Head of Franchising and Commercial Services

Franchising


What does (Br)exit day mean for franchise brands?

Fiona Boswell

 

The official date for our withdrawal from the EU is January 31, followed by a transition period until 31 December 2020, during which the future legal relationship with the EU is set to be negotiated in detail.

Protecting your Brand in the EU – Key points to note:
Following the conclusion of Brexit in December 2020, European Trade Marks (EUTMs) will no longer protect trade marks in the UK, the Intellectual Property Office (IPO) will create a comparable UK trade mark for all right holders with an existing EU trade mark.

Existing EUTMs will still protect trade marks in EU member states and UK businesses can still apply to the EU Intellectual Property Office for an EUTM.

There will be no changes to UK registered trade marks as a result of Brexit.

Anyone with a pending EUTM application will have 9 months after exit day to register a comparable UK trademark.

Renewing trademarks
At the end of the transition period, a comparable UK trade mark will be created for every EU trade mark which will:

  • Be recorded on the UK trade mark register;
  • Have the same legal status as a trade mark under UK law;
  • Keep the original filing date;
  • Keep the original priority or UK seniority dates; and
  • May be challenged, assigned, licensed or renewed separately from the original European Union trade mark.



Overseas Expansion on the cards?
Brexit will also have indirect effects on International Registrations (IR trademarks) designating the EU, which were registered prior to the last day of the transition period.

They will be cloned, at no cost, into comparable UK trademarks keeping the same application, priority and registration dates as the IR trademark. It is important to note that the newly created trademarks will then be a national UK registration and not a UK designation of the IR trademark, meaning that they must be renewed separately from the original International Registration.


Licences, security interests and assignments
Subject to any specific conditions, the new law confirms that a licence or security interest recorded against an EUTM will continue to have the same legal effect in the UK.


Supplier to the Network? Exhaustion of intellectual property rights within the EEA
Parallel goods are genuine goods manufactured or held under a licence by the rights holder, which are sold by the rights holder. At present, intellectual property rights are exhausted once the IP protected goods are placed on the market within the EEA.


Post Brexit, UK IP rights holders will not be able to prevent the import of parallel goods from the EEA. Whereas, EEA IP rights holders will be able to prevent the import of parallel goods from the UK into the EEA. Even though the goods would have been placed on the market in the UK, thus exhausted, post Brexit this will not be considered exhaustion in the EEA.


If you are interested in any of the topics raised in this article, have any questions or would like to receive further information, please contact our Head of Franchising and Commercial Services Fiona Boswell on e: fboswell@fraserbrown.com or t: 07824 621134. 

Alternatively, contact a member of the team on 0115 9888 777.

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