Tag Archives: EU Referendum

trade mark overseas

Taking your trade mark overseas – what you need to consider

Depending on your business type, you might have the opportunity to take your trade mark overseas. This could come quite quickly in your business, or might be a step that you consciously take after trading in the UK for a few years first.

What does trading overseas mean?

When I say take your trade mark overseas, I don’t specifically mean that you need to set up a physical office or shop to be active. How about if your products are stocked by someone in another country. Maybe you sell online and find that you have an increasing number of sales in a particular country, or group of them. Perhaps you manufacture your products and use a factory overseas to do that. Do you visit and exhibit your products at international trade shows. All of those situations (and countless others) result in your business having an interest outside of the UK.

Brexit has meant that there are some unanswered questions about what will happen to any trade mark rights you have at a European level (see my blog post here).

However, several companies don’t have any rights beyond the UK. This means that you could be vulnerable to all kinds of issues when you take the trade mark overseas.

So what should you think about doing to protect your trade mark overseas?
  • Check that the trade mark is available. You should look at whether there are possible conflicts with existing companies. And do this in each country of interest. Someone else might have earlier rights than you. Just because you are an expanding business, doesn’t mean you have automatic rights to use your trade mark overseas.
  • If you are manufacturing in another country, you should have trade mark protection there. The most common trade mark issue with overseas manufacture is that products are copied in that country, and the company has no rights there.
  • Protect the trade mark in each country you trade in. You might have a minimum trade rule for each country. So if you sell over a certain value in a particular country, then it makes the “hit list”. You should review this each year and every time a new business milestone occurs, such as securing a new stockist.
  • If you’re attending trade shows overseas be aware of how far and wide your brand is travelling. Stockists, manufacturers, distributors (and those who would like to be your stockists, manufacturers and distributors) might decide to protect your trade mark “for you”. This can be a nightmare for investors as well as taking action in case of trade mark enforcement issues. Best to get in there first and be the clear owner of your trade mark.

If you would like more information or would like to discuss how I can help you protect your trade mark everywhere that matters to you, please get in touch.

The EU Referendum result and your trade marks

It’s been a few days since the EU Referendum result was known. Whichever side of the debate you fall on (and everyone has had an opinion!), no one can deny that we’re facing some major changes to the way things get done in the UK and the EU generally. Having taken a few days to consider it, purely from a “trade marks for business” perspective, here are some thoughts:

  • Nothing has changed at the moment. Your UK rights are still valid. Your EU rights are still valid. EU rights still extend to the UK.
  • There is no need to panic. The UK won’t leave the EU until 2 years after the date that they “push the button” and give notice to leave. It doesn’t look like that notice will be given any time soon.
  • Your existing EU rights are not worthless. As and when the UK leaves the EU there will, almost certainly, be the option to keep your existing EU rights in the UK. This will undoubtedly attract a fee, but will nonetheless be possible.
  • For future trade mark filing plans, think about which countries you genuinely will use your trade mark in. At the moment, an EU trade mark is a cost effective way of protecting your trade mark in all of the EU countries through one application. If you have an interest in the UK and only one or two other EU countries, it might be better to file trade mark applications only in those countries of interest. Contact me for advice on your EU filing strategy.
  • If you have an EU trade mark coming up for renewal, so long as it is still of interest to you in part of the EU (including the UK), you should renew it. Letting it lapse now will not give you continued rights in the UK once the UK has officially left the EU.
  • Make sure that the details on the register are accurate. This includes ownership, address and representative. If you have more than one representative across your portfolio, consider consolidating to one single representative if it is possible within business decisions. This will make it much easier to handle any future changes to the EU trade marks, and the “new” UK protection. Please contact me if I can help consolidate your portfolio.

If you have any questions or concerns about the consequences for your trade mark rights following the EU Referendum result, please get in touch.

Image from Pixabay with thanks.