We are not yet certain whether Brexit will happen on 29th March 2019 or whether Article 50 will be extended, but one thing is certain – however and whenever the UK leaves the EU, there will be an impact on EU trade marks.
There are currently three Brexit scenarios:
- An agreed ‘withdrawal agreement’ with the EU with a transition period – this is still the aim for the UK government (however, unlikely that seems today). The transition period is currently set to expire on 31 December 2020 – during that time, the UK will no longer be an EU member state but will be treated as such under EU law.
- A no-deal Brexit – if there is no agreed withdrawal agreement then the UK will leave the EU with ‘no deal’.
- Article 50 is extended – to try and give more time for a withdrawal agreement to be reached.
In terms of guidance to owners of EU IP rights (either trade mark or registered design), there is in reality little difference between an agreed withdrawal and a no-deal Brexit – both scenarios propose a similar system with regard to what will happen to your EU rights. The UK government has confirmed that all existing EUTM registrations will continue to be protected in the UK through the automatic granting of equivalent UK registrations. Whilst the process for granting such equivalent rights hasn’t yet been published, it will be an automatic process, but with an opt-out for any rights holders that may not want a UK registration. It will not involve any cost on the part of the rights holder.
The resulting UK registration will, thereafter, be subject to renewal in the UK, can form the basis for proceedings in the UK, can be challenged for invalidity/non-use in the UK and can be assigned and licensed independent from the EUTM from which it originated.
Perhaps the biggest impact will be felt by the holders of EUTM applications that are pending at Brexit (i.e. not yet registered). Such applicants will not be automatically granted an equivalent UK application and will instead have a period of 9 months to file an equivalent UK application which will benefit from the same filing/priority/seniority date as the EUTM from which it originated. Importantly however the holder will need to pay for this new UK application.
It is expected that international registrations, designating the EU, will be dealt with in the same way as EUTMs but whilst the UK government is discussing the matter with WIPO the details of those discussions has not yet been revealed.
The same automatic registration will apply to granted registered Community Designs but not to applications.
Unfortunately, none of this is yet written into law and there are still many elements that have yet to be fully discussed and agreed. The Trade Marks (Amendment) (EU Exit) Regulations December 2018 is the guiding (draft) legislation for trade marks but there is currently no equivalent draft legislation in place for design rights.
What should rights holders do?
Practical steps that can and should be taken now include the following considerations:
- Review EUTM and RCD portfolios to consider: whether you wish to retain (or renew) the replicated IP right in either or both jurisdictions. Assuming the duplication takes place as per the UK’s published plans, there will also be an ‘opt out’ clause if you do not wish to have a nationalised IP right.
- If you have any EU rights which are still in their application stage, please speak to us as soon as possible, as the application will not be replicated automatically on to the corresponding UK Register and a separate application will need to be made to the UKIPO.
- The UK is planning to create a new right, called the Supplementary Unregistered Design Right to ensure that all unregistered Community designs that exist on Brexit day continue to be protected and enforceable in the UK for their remaining lifetime. We have no further details at this stage; however, we also recommend pulling a list together of any unregistered design rights affected in case further action is necessary.
- Coexistence agreements, licences and other IP agreements that cover the EU should be varied specifically to include the replicated UK rights unless there is evidence that such documents were not intended to have effect in the UK. For this reason, we recommend ensuring that the territory clause in agreements for all ongoing matters which include the EU also includes the UK separately.
Over the next few weeks we will be reviewing all EU trade marks and registered designs for which this firm is the recorded representative and we will be contacting all clients who are owners of these rights. If we are not currently managing your trade mark or design portfolio and you would like us to help you, please email me or Emma Watts for further assistance.