Trademark law & Brexit: the UK still belongs – at least for now

12 March 2022

One of the main advantages of an EU trademark is that a single court case is enough to obtain an infringement ban in all 27 EU countries. Sometimes it is even enough for the former 28th Member State, the United Kingdom – and this is not despite Brexit, but because of it, according to a recent judgment by the Court in The Hague.

The case in question concerns a holistic method to bring body, soul and mind into balance, which might not be a bad idea for the EU, but is of no further importance for the more interesting part of this judgment, which relates to Brexit.

In this case, the owner of the trademark was claiming an infringement ban for the entire territory of the EU, but – and here it comes – at the time of initiating the proceedings, the United Kingdom was still part of the European Union, although by the time the judgment was issued it was no longer a member. What are the consequences?

Split up

Under the so-called Withdrawal Agreement, all EU trademarks were automatically split into one EU trademark for the 27 member states which remained, plus an identical national trademark for the United Kingdom. This change took place while the proceedings were taking their course, so the UK part of the EU trademark was, in short, converted into a national UK trademark. Accordingly, for existing EU trademark holders, trademark protection in the UK was not suddenly lost.

But now, in this case, the Court in The Hague was suddenly faced with the question of whether it could pronounce an infringement ban for the United Kingdom after Brexit. Despite the claimant’s not having explicitly invoked it in the past, the EU trademark law invoked by the trademark owner now suddenly protected two trademark rights on the grounds of the UK trademark created by the split...

Also applicable for the United Kingdom.

The court concluded that it was therefore competent to issue a ban on infringement for the United Kingdom. It follows from the aforementioned Withdrawal Agreement that the jurisdiction in any proceedings instituted before the end of the transition period continues to apply unchanged. "This means that the United Kingdom is considered part of the Union insofar as the application of the said rules is concerned". In such a situation, the legal protection of an EU trademark is guaranteed, even after Brexit.

Life goes on after Brexit

This is good news for trademark owners, as well as being one of the first examples of a post-Brexit court case. Many more will probably follow, until all the obscurities and points of contention have been cleared up – or until the UK is back in the EU.

Now, that would be cosy, not to mention making life easier.

Naturally, we will keep you informed of all relevant developments concerning Brexit in trademark law. Feel free to contact one of our trademark attorneys if you have any specific questions about trademark protection in the EU and the United Kingdom. We are always happy to help.

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