Trade mark and design planning for a "no deal" Brexit

In a very recent development that will come as a relief to businesses, the UK Government has issued some guidance on what will happen to EU intellectual property rights in the event the UK and EU fail to reach an agreement by 29 March 2019 (a “no deal” scenario). For the full Government announcement, click here. Below is a summary.

Registered EU Trade Marks and Community Designs

The Government has stated that it will “ensure that the property rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK”. The equivalent UK right will come into force at the point of the UK’s exit from the EU and will be granted with “minimal administrative burden” (though the Government has not as yet expressly stated that there will be no additional official fees). The right holder will be notified that the new UK right has been granted and will have an option to opt out if it does not wish to own such a right.

Pending EU Trade Mark and Community Design Applications

The owner of an EU trade mark or Community design application which is pending at the date of the UK’s exit from the EU will have a period of nine months from that date to file an application for a UK equivalent right which retains the filing date (and, if applicable, the priority/UK seniority dates) of the corresponding EU application. Affected application owners should note that they will not be expressly notified by the UKIPO about the opportunity to file for an equivalent UK right. It will be up to those owners and their representatives to monitor the nine-month period and file an application if required. Standard UK official application fees will apply to new applications.

International (Madrid Protocol/Hague Agreement) Registrations designating the EU

The Government advises that it is working on plans to ensure that registered trade marks and registered designs filed through the Madrid and Hague systems which designate the EU will continue to enjoy protection in the UK after 29 March 2019. This includes “practical solutions for pending applications”. Details will be released in due course.

Unregistered Community Designs

An unregistered Community design currently provides three years of protection from the date that the design is first made available to the public in the EU. This protection is separate to that provided by the UK’s own design right. Similar to its position on EU trade marks and registered Community designs, the Government has stated that it will “ensure that all unregistered Community designs which exist at the point that the UK leaves the EU will continue to be protected and enforceable in the UK for the remaining period of protection of the right”. Therefore, owners of unregistered Community designs need not fear that they will lose their protection in the UK following 29 March 2019. The rights in the unregistered Community designs will simply continue in the UK after that date.

In addition, the Government has announced that it will be introducing a new unregistered design right in the UK which mirrors the characteristics of the unregistered Community right. It will be called the “supplementary unregistered design right”. Consequently, eligible designs which are made available to the UK public after 29 March 2019 will enjoy automatic protection under this new provision.

Legal Disputes involving EU Trade Marks, Registered Community Designs and Unregistered Community Designs

The Government advises that provision will be made regarding the status of legal disputes in the UK involving EU trade marks, registered Community designs and/or unregistered Community designs. More information on this will be forthcoming prior to 29 March 2019.

The Government’s guidance is timely in view of the current uncertainty surrounding negotiations between the UK and EU. While it was expected that provisions would be put in place to safeguard the rights of EU trade mark and design owners, the issuance of official confirmation in the matter provides those owners with welcome peace of mind. With six months to go before the UK’s departure from the EU, and given that the Government has already announced that EU trade marks and registered Community designs will be automatically cloned in the UK if the European Commission’s draft Withdrawal Agreement is agreed, businesses should consider filing new EU trade mark and Community design applications at this point. If filed over the next few weeks, there is a good chance that registration could be secured before 29 March 2019, meaning that protection in the UK after that date would be automatic. It is also recommended that any applicants whose EU trade marks are currently subject to opposition proceedings seek to resolve those oppositions sooner rather than later where possible, to increase their chance of securing their registration before 29 March 2019.