Our views on each category of rights are set out below. If you wish to act, we can assist and attach our “Brexit-proofing” fee schedule.
We will be watching the position carefully and updating this note regularly.
Registered EU Rights
We are now fairly confident (subject to the caveat that there is a small risk that the necessary legislation will not be enacted in time), that it is not necessary to file parallel UK applications to replicate existing Registered EU Rights. However, as the necessary legislation is still not in place, if you have any concerns you may wish to file duplicate UK applications for protection of key rights in order to ensure registered protection in the UK after Brexit.
New and pending applications for EU Rights
As “Brexit Day” is now less than two months away, any new applications for EU trade marks or International trade marks designating the EU, filed from now will not have been granted by “Brexit Day”. Any new or existing trade mark applications still pending on Brexit Day will not automatically be replicated as corresponding UK equivalents.
This will mean that new UK applications will have to be filed on the priority of the corresponding EU right within 9 months of Brexit Day and will be subject to further examination and the risk of opposition. If obtaining registered protection in the UK is a priority, rights holders who wish to ensure that their trade mark is the subject of an application in the UK on “Brexit Day” should therefore file parallel UK and EU applications NOW.
Similarly, where a pending EU trade mark or International trade mark (EU) 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 or designation NOW.
(It may be more cost-effective to file a separate UK national application than to apply to protect an 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.)
Registered designs applications typically proceed to grant in around two months. Given the short time remaining until Brexit Day and the continuing uncertainty we would also suggest filing parallel UK and EU applications NOW.
Assignments, licences and security interests
A review should be conducted of any assignments, licences and security interests recorded against or otherwise relating to any Registered EU Rights, with a view to recording these against the Corresponding Registered UK Rights before Brexit Day.
The Regulations provide that licences of a Registered EU Right which applies to the UK will continue to apply to the UK, in respect of the Corresponding Registered UK Right. However, these Regulations will not affect the position outside the UK, and so licences under another country’s laws may not operate in the same way.
Rights holders should be aware that parallel imports into the UK are likely to continue as now, and so it will not normally be possible to prevent them through the enforcement of IP rights. Also, although the UK will continue to maintain its current regional exhaustion regime, it cannot be assumed that the EU will reciprocate (and it has given no indication that it will). This means that parallel imports from the UK into the EU are likely to infringe, meaning that EEA rights holders are likely to be able to prevent parallel imports from the UK after Brexit Day.
Pan-EU contracts such as licence, distribution and co-existence agreements may therefore include provisions that will no longer work effectively after Brexit day, and it is prudent to review important contracts (existing and new) to ensure that they are “Brexit-proof” (particularly in respect of the identification of IP rights and definitions of territory and markets, as well as jurisdiction and governing law). Consideration can also be given to rights to terminate the contract, or vary its terms, in the event of a “no deal” Brexit or any particular consequence of a “no deal” Brexit.
You should consider reviewing both your existing contracts and new contracts to ensure that they are “Brexit-proof”. Focus on definitions of the relevant territory as the “European Union” and of the relevant rights only with reference to EU TMs and/or Community designs. Ensure that there is an appropriate jurisdiction and governing law clause, particularly where the parties are in different countries. Consider whether you would wish now to have the right to terminate the contract, or vary its terms, in the event of a “no deal” Brexit or any particular consequence of a “no deal” Brexit.
Where problems are identified (references to EU trade marks which should also refer to a new UK trade mark deriving from the EU right, for example) it may be possible to agree suitable corrections with the other parties.