EU trade marks and Community registered designs (referred to below as “EU Rights”) will be affected by Brexit. They apply automatically across the whole EU, but without action by the UK government, these rights will no longer be protected in the UK once it leaves. Brexit will also affect geographical indications, plant variety rights and the exhaustion of rights, and we will be providing separate guidance on these.
The UK and EU have substantially negotiated a draft “Withdrawal Agreement” which sets out a framework for UK protection of EU Rights existing at the end of a planned transition period (31 December 2020), and those which are pending applications or subject to oppositions at the end of the transition period.
However, there are some serious obstacles to reaching complete agreement, and “nothing is agreed until all is agreed”. The EU is working towards a November 2018 deadline for agreeing the Withdrawal Agreement but, as with any negotiation, it may be taken down to the wire. A “no deal” Brexit remains a significant possibility and both the EU institutions and the UK Government are making preparations for this outcome. It could have a significant impact on the status of EU Rights in the UK. We deal below with both the “deal” and the “no deal” scenario, and conclude with the steps we recommend rights holders take.
“Deal”
The key provisions of the draft Withdrawal Agreement affecting EU Rights are:
- EU Rights which are registered by the end of the transition period will, after the end of the transition period, be replaced in the UK by corresponding UK registrations.
- Applications for EU Rights (including published applications) pending at the end of the transition period will not automatically be converted into corresponding UK applications. Rights holders instead have 9 months in which to file new UK applications with the same filing/priority date as the existing EU applications.
- The UK must take steps to ensure that International trade mark and design registrations protected in the EU before the end of this period are also protected in the UK.
- If an application to revoke or invalidate an EU registration is ongoing at the end of the transition period and is subsequently successful, the corresponding UK registration will also be invalidated or revoked (although the UK may disregard this if the application was based on a right which did not apply in the UK).
- Community unregistered design rights which are in force at the end of the transition period will be replaced by a corresponding UK version of the Community unregistered design right.
Although it is not yet officially agreed whether the conversion of EU Rights to corresponding UK registrations will take place free of charge without any application or administration procedure, the UK Intellectual Property Office has confirmed this in a statement.
“No Deal”
The UK Government has issued a “No Deal Technical Notice” setting out its proposals in case there is no Withdrawal Agreement and the UK leaves the EU without a deal. The UK Government will take steps to achieve the following, with effect from “Brexit Day” (29 March 2019):
- registered EU Rights will be replaced in the UK by equivalent UK registrations with “minimal administrative burden”;
- pending applications for EU Rights will not be converted but the applicant will be able to apply for a corresponding UK right with the EU application filing/priority date during the 9 month period following 29 March 2019; and
- steps will be agreed with the World Intellectual Property Office for transition of International Registrations designating the EU to UK designations.
It is unclear when the necessary legislation will be in place and exactly what form this will take. There is therefore a risk (low, in our view) that owners of EU Rights may find that they are not protected in the UK after Brexit.
Should you act NOW?
Our views are set out below. If you wish to act, please get in touch. We will be watching the position carefully and updating our advice regularly.
Registered EU Rights
In the current circumstances, filing parallel UK applications replicating existing registered EU Rights is the most cautious, risk averse approach. So that rights holders have sufficient time to obtain UK registrations by Brexit Day (29 March 2019), where they consider it appropriate, they should, bearing in mind the assurances given by the UK government in the “No Deal Technical Notice”:
- consider NOW whether it is appropriate to file parallel UK applications for key existing EU trade marks and Community registered designs; and
- review their EU Rights portfolios to decide which of their other rights should be “Brexit-proofed”, and consider whether a wider UK parallel filing programme is necessary. For less important rights, where the possibility of a hiatus in protection might be acceptable, this may mean keeping a watching brief on developments.
New and pending applications for EU Rights
On “Brexit Day” EU trade mark applications will not automatically be converted into corresponding UK equivalents.
As “Brexit Day” is now less than 6 months away, there is a risk that any new applications for EU trade marks filed from now will not have been granted by “Brexit Day”. If there is a “no deal” Brexit, they will not be converted to equivalent UK rights. This will mean that new UK applications will have to be filed on the priority of the corresponding EU right and will be subject to further examination and the risk of opposition. Rights holders who wish to ensure that their trade mark is registered in the UK on “Brexit Day” should therefore file parallel UK and EU applications NOW.
Similarly, where a pending EU trade mark application is the subject of an objection or an opposition which is unlikely to be successfully resolved before “Brexit Day”, rights holders may also wish to consider filing a parallel UK application NOW.
There is less of an immediate concern for Community registered designs applications (which typically proceed to grant in around two months). However, for key new designs we would also suggest filing parallel UK and EU applications NOW and, in the case of other new designs, doing so from no later than 1 January 2019 if the future position remains unclear.
International Registrations (EU designation)
As there is still uncertainty as to what will happen to EU designations of International Registrations, rights holders should consider filing parallel UK applications NOW, at least for key rights, to ensure that these are protected in the UK by “Brexit Day”.
It may be more cost-effective to file a separate UK national application than to apply to protect the International Registration in the UK as a subsequent designation, as the UK IPO official fees are lower than those of the World Intellectual Property Organisation.