As you will know, under the leadership of Boris Johnson, the new UK government has until the new exit date of 31 October 2019 to reach an agreement on Brexit or leave the EU without one. Johnson has vowed to leave the EU on 31 October, with or without an agreement.
Exiting the EU will have an impact on the protection afforded to EU trade mark and design rights, whether or not a deal is reached. The UK government has issued guidance notes (see here) and draft legislation (see here) which set out how EU trade mark and UK/EU design rights will be treated in the event of a no-deal Brexit.
We summarise below some of the key changes in the event of a no-deal scenario (changes are also planned for unregistered UK/EU design rights, however, this falls outside the scope of this article).
EU trade marks and designs registered on exit day
Any registered EU trade marks (EUTMs) and community designs (RCDs) owned by you that are in existence on the exit date will continue to be protected and enforceable in the UK – on exit day, the UK Intellectual Property Office (UK IPO) will create new equivalent UK rights called ‘comparable UK trade marks’ and ‘re-registered UK designs’. These equivalent rights will be recorded on the UK registers and treated as if they had been applied for and registered under UK law.
No fee will be required, and the equivalent rights will benefit from the same filing, registration and priority dates as the EUTM/RCD from which they derive. These rights will be treated as fully independent UK rights (you will, however, have the option to opt out of holding an equivalent UK right if desired, subject to certain conditions).
Pending EU trade mark and design applications
If you own a pending EUTM/RCD application as at the exit date, you will have a nine-month window within which to file an application for an equivalent UK right. So long as the application is made within this period, you will be able to claim the earlier filing date of the corresponding EUTM/RCD. These applications will be treated as new UK trade mark/design applications. As such, they will require a fee and will be examined and processed under UK law.
International registrations
The EU designations of any international trade mark/design registrations owned by you, which have protected status before exit day, will be treated in the same way as EUTMs/RCDs. These new equivalent rights will each be called a ‘comparable trade mark (IR)’ and ‘re-registered international design’. As with EUTMs/RCDs, these new rights will be treated as if they had been applied for and registered under UK law as national rights, and will share the filing and registration dates of the international registrations from which they originate.
International trade mark/design registrations that have not yet achieved protected status in the EU by the exit date will be treated in the same way as pending EUTM/RCD applications (subject to some differences relating to subsequent EU trade mark designations).
Why is this important?
You will not need to take any action to extend protection of existing EU trade mark/design registrations to the UK post-Brexit as this will happen automatically. However, if you have filed or are considering filing EU trade mark/design applications in the run-up to the exit date, you should seek advice to ensure that your rights will be adequately protected in the UK.
About the Author’s
For further information on how Brexit might impact your trade mark or design rights, or to discuss representation before the UKIPO and the EUIPO regardless of the Brexit outcome, please contact Margaret Arnott of Mathys & Squire at MJArnott@mathys-squire.com
