Brexit increases battles over trademarks

Trademark application disputes have surged to record levels since Brexit, according to research by a law firm of official figures.

The number of oppositions to UK trademark applications more than doubled to 8,026 last year, compared with 3,584 in 2020, Mathys & Squire, the intellectual property law firm, said.

Britain left the European Union’s trademark system in January last year, meaning that any business wishing to protect a trademark now needs to make a separate application. Mathys & Squire said it had led to a “rush” to file applications and, in turn, a rise in the number of oppositions being filed.

Recent disputes include McDonald’s opposition to an application to register the McVegan trademark in the UK, which the fast-food chain won, and Shine TV, the producer of the BBC’s MasterChef series, successfully opposing three applications for trademarks incorporating Master Chef Academy for education and training services.

There were a record number of applications, with 195,000 in the year to October, up 54 per cent on the year before, official figures showed.

The “significant” increase in trademark applications resulted in a lengthening backlog at the Intellectual Property Office, the government agency that handles them, and the average examination feedback turnaround time for customers increased from five to fifteen days to up to three months, the office’s annual report showed. It said it had since returned to the previous level.

To help to deal with the demand, the office has appointed 259 new members of staff, including trademark examiners, patent examiners and IT specialists.

“Reductions to this feedback time are planned in 2021-22 with the aim to achieve normal service levels by the end of the year,” the office said in its last annual report.

Disputes over trademarks, known as trademark oppositions, occur when a business files an application with the office and another person or business tries to block it. The office then will determine whether it should be refused on the basis of an earlier right or other grounds, such as bad faith.

Harry Rowe, managing associate at Mathys & Squire, said: “It is likely that this is no short-term spike in disputes, this is what trademark protection in the UK is now going to look like.

“Brexit has opened up a whole new battlefield for businesses with valuable brands to protect. Prior to Brexit, trademark owners could protect their trademark across all the EU member states in one application. Now that the UK is no longer covered in an EU trademark, trademark owners must file two separate applications in order to achieve the same protection.”