What will happen?
The rights affected by Brexit will be EU trade marks, Community designs (registered and unregistered), and EU designations of International trade marks and registered designs (“EU Rights”).
The UK Government has enacted regulations providing for the protection of EU Rights in the UK which will take effect in the event of a “no deal” Brexit – the “Regulations”.
The key provisions of these Regulations have not changed since they were summarised in our 4 March 2019 briefing note Trade marks and registered designs. However, it is worth bearing in mind the following in the event of a “no deal” Brexit on 31 October:
EU Rights which are registered or protected in the EU on Brexit day (“Registered EU Rights”) will automatically be treated and enforceable as though they were registered in the UK (“Corresponding Registered UK Rights”), with the same renewal dates and priority claims, subject to a right to “opt out”.
Existing unregistered Community designs will continue to be protected and enforceable in the UK for the remainder of their duration.
Pending applications for the registration of EU Rights will not be converted into corresponding UK applications but the applicant will have nine months to apply for registration of the same trade mark or design in the UK on the priority of the corresponding EU application.
A licence 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, on the same terms but subject to such modifications as are necessary for their application in the UK.
Pending UK court proceedings based on an EU trade mark or Community design will continue but an injunction to prohibit infringement can only be granted in the UK, and only the Corresponding Registered UK Right can be revoked or invalidated.
Pending proceedings before the UK Intellectual Property Office based on an EU Right will continue unaffected.
Existing EU-wide injunctions prohibiting the infringement of an EU Right will continue to have effect and be enforceable in the UK.
The UK will unilaterally maintain in force the current EEA-wide regional exhaustion regime.
Should you act NOW?
Our views on each category of rights are below:
Registered EU Rights
It is NOT necessary to file parallel UK applications to replicate existing Registered EU Rights.
New and pending applications for EU Rights
Any applications for EU Rights still pending on 31 October will not automatically be converted into UK applications and it will be necessary to file a new corresponding UK application on the priority of the EU application within 9 months (ie by 31 July 2020).
Existing applications for EU Rights
Where you already have an existing application for an EU trade mark or for a Community design, we suggest that you do not file a duplicate UK application now, unless obtaining registered protection in the UK is time critical, or the EU application is the subject of an objection or an opposition which is unlikely to be successfully resolved before Brexit day.
In the case of new applications, we would suggest filing parallel UK and EU applications 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.
You should review both your existing contracts and new contracts to ensure that they are “Brexit-proof”. For example, the Regulations provide that a licence 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, this may not work effectively for licences under another country’s laws.
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.
Oppositions and cancellation proceedings
Although pending proceedings before the UK Intellectual Property Office based on an EU Right will continue unaffected, the EU Intellectual Property Office (EUIPO) has made it clear that oppositions or cancellation proceedings pending on a “no deal” Brexit and based only on UK rights will be dismissed for lack of a valid basis. It is not clear how appeals pending before the Board of Appeal and General Court will be treated.
We therefore advise that new oppositions and cancellation proceedings before the EUIPO not be based solely on UK rights.
The unilateral maintenance by the UK of the current EEA-wide regional exhaustion regime means that it will still not normally be possible to prevent parallel imports from the EEA into the UK. It is unlikely that the EU will reciprocate, meaning that EEA rights holders are likely to be able to prevent parallel imports from the UK after Brexit day.
Rights holders and importers will therefore need to review their position after Brexit day.