Update: 27 September 2018 – Brexit: EU Trade Marks and Community Designs, including if there is ‘no deal’

Brexit: EU Trade Marks and Community Designs, including if there is ‘no deal’

What is the current situation?

The UK is to leave the EU (“Brexit”) on 29 March 2019. When Brexit becomes fully effective, EU unitary trade mark registrations (“EUTMs”) and registered Community designs (“RCDs”) will cease to have effect in the UK, but will continue to have effect in the remaining 27 member states. Currently, and up until that point, both EUTMs and RCDs continue to have effect in the UK.

European patents are unaffected by Brexit as the European Patent Office is not an EU organisation.

The draft Withdrawal Agreement between the UK and EU sets out the terms upon which the UK will leave the EU, but remains a draft document. The draft provides for a 21 month transitional period until December 2020, during which EUTMs and RCDs would continue to be recognised and enforceable in the UK. If the Withdrawal Agreement can be settled upon and signed in the short term, EUTMs and RCDs will continue to have effect in the UK beyond the Brexit date of 29 March 2019, and through to 31 December 2020.

Should no deal be reached, 29 March 2019 would become the effective date at which EUTMs and RCDs would no longer cover the UK.

What happens after the ‘effective date’ of Brexit, and what if there is ‘no deal’?

The UK Government has indicated that all existing EUTMs and RCDs will be protected in the UK as it leaves the EU and, in place of those EU-level rights, around 1.7 million new UK trade marks and registered designs would be granted, to afford at a national level equivalent effective dates and scope of protection.

The possibility of the UK leaving the EU without an agreement is receiving increasing media exposure as the date of Brexit draws closer. The UK Government has begun to publish a number of technical notes of guidance to prepare for a ‘no deal’ scenario, but maintains that ” … a scenario in which the UK leaves the EU without agreement (a ‘no deal’ scenario) remains unlikely given the mutual interests of the UK and the EU in securing a negotiated outcome.”

Negotiations, including in relation to the Withdrawal Agreement, are said to be “progressing well” with both sides continuing to work hard to seek a positive deal, but with preparations for all eventualities, including ‘no deal’, being the duty of a responsible government.

UK Government Guidance: trade marks and designs if there’s no Brexit deal

On 24 September 2018, the UK Government published guidance focussed upon trade marks and designs in the event of ‘no deal’, indicating that the following would apply:

  • Protection of existing registered EU trade marks or registered Community designs will continue through creation of a new, equivalent UK right, to be granted ‘with minimal administrative burden’. Rights holders not wishing to be granted such a new UK registered trade mark or design may opt out.
  • There will be a 9 month period, for EU trade mark and Community design applications pending at the effective date of Brexit, during which equivalent UK applications could be filed, retaining the effective EU application date. UK national application fees would be incurred.
  • Provision will be made for ongoing legal disputes involving EU trade marks or Community designs.
  • Unregistered Community designs which exist at the effective date of Brexit will continue to enjoy protection in the UK for the remainder of their term of protection, without any required action by the rights holder.

What should you consider doing now?

Based on the latest statements and guidance issued by the UK Government, we do expect them to unilaterally honour EUTMs and RCDs which exist at the date of Brexit, be that in the event of no deal or at the end of the 21 month transition period if the Withdrawal Agreement proceeds to signature.

Precautionary UK national trade mark applications could still be filed now, especially for high value marks, so as to provide certainty, but this would likely result in a duplication of rights in the long run.

There are other circumstances in which national trade mark applications should be considered in addition to or in place of EU registration, such as where use of a trade mark will not or does not extend to a substantial part of the EU; but such issues existed before the vote for Brexit, just as they are relevant now.

We continue to monitor for developments in this important area, ready to inform our clients whenever there is real news to report. If you would like to discuss the current scope of your rights, please contact your usual advisor at AA Thornton.

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