Trade mark harmonisation post-Brexit

5th Nov 2020

The freedom for the UK to depart from EU trade mark law is more theoretical than it may first appear, Daniel Alexander QC told delegates at our Autumn Conference.

Daniel Alexander QC

In his Keynote address, Daniel Alexander QC from 8 New Square shared insight into the future of EU and UK trade mark law in a post-Brexit world.

The potential value of freedom to depart from EU law

Daniel took delegates back to the 2006 case between L’Oréal and Bellevue.

He highlighted how ECJ ruled against the opinion of Jacob LG – that there was no likelihood of confusion between the two trade marks and that the trade mark would not jeopardise the reputation of L’Oréal.

Daniel raised this because in this case, the EU has a more protective approach to trade mark law compared to other major trading areas or blocs.

Countries with a healthy attitude to competition law, such as the US, would not have to keep a perfectly lawful product off the market by the use of trade mark law to suppress truthful advertising.

The separation between the UK and the EU could give the UK more freedom in areas like this.

The theatrical ability of the UK courts to depart from EU law

The Ministry of Justice’s response to consultation, about the departure from retained EU case law by the UK court and tribunal, has resulted in the Government intending to extend the power to depart from retained EU case law to the Court of Appeal in England, Wales and other equivalent courts – despite the fact 56% of respondents said they did not wish to do this.

However, UK courts will be bound by UK precedents on EU law if otherwise bound, and the court of appeal will continue to be bound on the decisions of the court of appeal save in special circumstances.

Daniel told delegates that the freedom to depart from EU trade mark law is more theoretical, or at least less extensive then it may at first appear.

Daniel said: “EU law has embedded itself into the fabric of UK trade mark law in a way that is hardly replicated in any other law. It’s not going to be straight forward to dis-embed it.”

The practical constraints on that freedom

Daniel also highlighted comparable registered rights.

Under the withdrawal agreement, the UK is bound to create these rights and they’re supposed to be comparable.

“Comparable trade marks are creatures of UK law, but the question then arises as to the extent to which the effect of a comparable mark can diverge from the effect of its EU-sister mark”.

Daniel raised the following questions.

  • To what extent in practice will the requirement for comparability in practice compel the UK courts to adopt the same approach to protection as developing EU law affords?
  • To what extent will undertakings in the UK be able to influence the development of EU trade mark law in so far as it affects their comparable marks in the UK – or purely UK marks applying the same law?
  • What impact will the inability of the UK Government to make submissions on TM law have?
  • Are there lessons from the relationship in patent law between the UK courts and the TBA where the approach is to follow them even if not required to do so?

Freedoms are much more likely to be theoretical then real Daniel summarised to delegates.


Daniel believes that the CJEU and the general court will continue to influence the UK directly or indirectly to a large extent because of its embedded relationship.

However, overtime the UK will have more limited ability to influence CJEU.  To prevent this, there will be a need to increase efforts to ensure that the positive impact of the UK’s involvement in harmonisation of this area of law is preserved.