Historically, brewers have led the way in registering their trade marks to protect their brands. The red Bass triangle was the first mark ever to be registered in the UK.
Since then, major brewers have maintained significant trade mark portfolios and the craft beer movement has triggered a rapid increase in the number of registered beer brands.
This is not just a UK phenomenon; beer brands travel well and must also be protected in valuable overseas markets. For a UK brewer, Europe is an obvious target market and, to obtain appropriate protection, many have opted for the extremely good value EU trade mark that applies across all member states.
So what will happen to the UK rights currently provided by EU registrations post-Brexit?
While the answer is not yet known, commentators and relevant bodies believe there is likely to be some provision made that would essentially maintain protection in the UK as well as, separately, in the EU. Given these expectations, it seems the question is really one of administration.
The European Commission has indicated that any pre-Brexit rights should be recognised automatically in the UK without incurring any costs for the rights owner. However, the UK Intellectual Property Office (which is tasked with managing UK rights) has been less clear, saying: "the government is looking at various options and we are discussing the best way forward with users of the system." One of the options under discussion is a requirement to opt in to maintain UK protection (possibly with a cost attached).
Another right caught in the Brexit web is the less common geographical indication (GI) – a sign used to designate a product's specific geographical origin that often relates to premium products, such as Kentish Ale and Rutland Bitter.
GIs are currently protected under EU law and the EU Commission has clearly indicated that the UK government should implement new legislation to ensure their continued protection. This seems highly likely and GIs may simply fall within the Repeal Bill.
There are a number of more technical issues to consider, such as how pending applications will be managed and what will happen to ongoing oppositions – particularly those based on UK unregistered rights. And what happens if a significant part of the "use" that is required to maintain EU trade marks after the initial five year period is pre-Brexit use in the UK?
Despite all of this uncertainty, there are steps that brewers can take now to protect their interests in this changing environment:
- Ensure they have trade mark registrations to protect their current activities.
- Check registrations will remain fit for current and future purposes and file additional applications where necessary.
- Prepare and budget for any changes to their future filing strategy and maintenance program.
- Take advice to understand the risks given the likely outcomes arising from Brexit.
- Review any agreements that refer to EU IP rights or list the EU as the relevant territory for enforcement issues i.e. agreements such as licences or co-existence agreements.
This article first appeared in The Brewers Journal.
This publication is intended for general guidance and represents our understanding of the relevant law and practice as at March 2018. Specific advice should be sought for specific cases. For more information see our terms & conditions.