On 24 September the UK Government published its guidance on how protection pertaining to EU Trade Marks, EU designations of International Registrations, and Community Designs will likely be treated in the UK in the event that no Brexit deal is agreed prior to the UK’s exit from the EU which is currently on 29 March 2019. This note is for guidance only as there are some aspects which are still not settled.
EUTM Registrations and registered Community designs
Owners of EUTM registrations and registered Community designs will automatically be granted a new UK equivalent right which will enjoy the same protection and enforceability in the UK as a normal UK trade mark registration. It is possible for an owner of an EUTM registration to opt out of this right.
EUTM Applications and Community Design applications
Owners of EUTM and Community design applications which are still pending as of 29 March 2019 will have a nine month period from the date of Brexit to apply for equivalent protection in the UK. Such applications will retain the EUTM or Community design filing dates and priority claims (if applicable). The applications will require the usual UK filing fees to be paid and will be subject to the usual UKIPO procedures.
It will be the responsibility of the owner of the EUTM application or Community design to apply for equivalent UK protection; the owner will not be formally notified of the possibility of applying for the equivalent UK protection by the UK or EU Intellectual Property Offices.
International Trade Mark Applications and Registrations (IRs) designating the EU
At present no guidance can be provided in relation to EU designations of International Registrations. The UK government intends to discuss the continued protection in the UK of EU designations of International Registrations with the World Intellectual Property Organisation (WIPO).
Clarity on how trade marks and designs will be handled post Brexit is becoming clearer although precise details are not yet settled. In the meantime:
Owners of EUTM and Community Design applications pending at the date of Brexit should ensure that equivalent UK protection is secured before the expiry of the permitted nine month period. GJE will of course take appropriate action to advise our clients in respect of this issue closer to the relevant date.
Trade Mark owners that are considering filing EUTM applications in the run-up to the date of Brexit should continue to consider filing a parallel UK trade mark application to ensure that rights are secured smoothly for the UK. GJE provides a special discounted “Dual filing costs package” to assist clients filing EU and UK trade mark applications at the same time.
Trade Mark owners of EU designations of International Registrations should consider filing a subsequent UK designation or a UK national application to ensure that its trade mark protection is extended to the UK, in the event no deal is reached with WIPO.
If there are any questions about the above, please contact the GJE Trade Marks department via 020 7655 8500.