Enforcing unregistered rights post-Brexit

It may be harder for owners of unregistered trademark rights to enforce their marks in the UK after Brexit, in view of recent case law and the UK’s application of the Paris Convention. Jessica Le Gros and Daniel Joy of Baker McKenzie report.

Much has been written about the potential effect of Brexit on UK trademark law, and the focus has so far been on ensuring the continuity of EU trademark rights in the UK. However, this is only the tip of the iceberg, and there are a number of other additional ramifications. In particular, Brexit may have an unexpected impact on the ability of famous brands to enforce unregistered rights in the UK.

When filing a UK trademark application, applicants are required to declare a bona fide intention to use the mark in the UK. Applications for EU trademarks do not require this, although EU filings can be considered dishonest if it becomes apparent that the owner's sole objective was to prevent a third party from entering the market.

The absence of the intention to use declaration in connection with EU filings means brand owners have been able to use defensive filing strategies, ie, by re-filing variations of EU trademarks at intervals to limit the risk to challenge on grounds of non-use. While the UK has been part of the EU, this provided a defensive filing strategy effective in the UK, even when the owner did not actually intend to use the mark in the UK. Brexit may close this particular route to protection in the UK, which will likely have a particular impact on famous marks which are not used in the UK.