June 17, 2019

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Brexit and Your Trade Marks – Some Practical Questions Answered

You will no doubt have received many updates discussing the potentially new landscape for Intellectual Property rights in the United Kingdom and European Union in the longer term. Some are long, some short, some academic, but maybe not all practical.

The following briefing answers some of the more practical questions and concerns around managing your trade mark portfolio in light of Brexit

What about renewals and seniority claims relating to UK and EUTMs?

Although making seniority claims from UK trade mark registrations in relation to European Union Intellectual Property Office, EUTM, registrations resulted in considerable renewal cost savings, we would advise not go down that route at this point.

If separate UK and EUTMs exist for the same mark, it may be advisable to renew and maintain them separately from now on.

As noted above, there will undoubtedly be transitional provisions in place to convert existing EUTM registrations into UK trade marks.

What about trade mark assignments, licences and agreements covering the EU?

Any new agreements containing clauses which regulate the ownership and use of trade marks in the EU should consider the territorial scope of the agreement, in particular, how the EU is defined at the date of the agreement. Parties to existing agreements may want to review terms once the situation regarding EUTM conversion has been established.

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About this Author

Jennifer Dean Intellectual Property Lawyer Drinker Biddle
Partner

Jennifer L. Dean assists clients with trademark clearance, registration and enforcement, with a focus on brand selection and management and litigation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. She is vice chair of the firm's Intellectual Property Practice Group and the chair of Drinker Biddle's Trademarks Group.

Jennifer manages global trademark portfolios in fields ranging from soft drinks to reinsurance, and also advises clients on copyright and licensing issues. She assists...

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