The UK Government has issued a notice confirming that even in the event of a no deal Brexit, there will be a mechanism in place to provide equivalent UK national protection corresponding to pending and registered EU Trade Marks and Designs, and to EU Unregistered Design Right.
However, the Government’s notice is thin on detail. In view of this continuing uncertainty, proprietors of EU Trade Marks and Designs should consider obtaining independent national protection for at least their most important marks and, subject to novelty requirements, their key designs.
The United Kingdom is due to leave the European Union on 29 March 2019 (Brexit-day). Negotiations between the UK and the EU for an agreed future relationship continue. The UK Government states that an agreement is likely. Nevertheless, it has been issuing “technical notices” relating to various key areas, setting out its position if no such agreement is reached - a so called “no deal” Brexit.
Specific UK Government assurances for the continued protection of EU Trade Marks and Designs in case of a no-deal Brexit
- UK protection for EU Trade Marks or Registered Community Designs which are granted as at 29th March 2019 will continue through the automatic creation of new, equivalent UK rights. Proprietors will be notified and may opt out if they wish.
It is not stated whether this mechanism will apply also to Madrid and Hague EU designations – the Government states that discussions with WIPO in that regard are continuing.
- Proprietors of EU applications for Trade Marks and Designs which are pending at the EUIPO on Brexit-day will have 9 months following that date to file equivalent UK national applications, on payment of a fee (to be commensurate with the current UKIPO fees for new applications). Such UK applications would enjoy the priority of the EU application from which they were generated. The UKIPO will not notify owners of EU applications of their rights in this respect.
Again it is not stated whether this mechanism will apply also to Madrid and Hague EU designations, only that the Government is continuing its discussions with WIPO in this regard.
- UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU Trade Mark or Registered Community Design, either via the EUIPO directly, or via WIPO.
- Existing registered and pending EU Trade Marks or Registered Community Designs will continue to be valid in the remaining EU member states.
- EU Unregistered Design Right will be recognised and enforceable in the UK for whatever remaining portion of the three year term that might exist on Brexit-day. Further, designs disclosed after Brexit-day will have equivalent protection under a new UK unregistered design right law which will mirror existing EU Unregistered Design Right protection.
- Provision will be made regarding the status of legal disputes involving EU Trade Marks, Registered Community Designs and presumably Unregistered EU Design Right which are ongoing before UK tribunals on Brexit-day. More information will be provided on this aspect before the point at which the UK exits the EU.
In brief, the UK Government confirms that a mechanism has been created and will be effected such that EU Trade Marks and EU Designs will continue to be protected in the UK after Brexit-day, even if there is a no-deal Brexit. However, no detail has been provided as to the handling of, for instance, those EU applications/registrations which, on Brexit-day, are under opposition or cancellation, or trade mark registrations which on that date might be subject to the use requirement.
Further, in respect of those trade marks and designs protected at the EU level via respectively, the Madrid and Hague systems, the UK Government has said only that it is “working with” WIPO to ensure continued protection in the UK for such rights.
Accordingly, and given this uncertainty, Beck Greener continues to advise that the cautious approach is for businesses to ensure that, at least for their primary brands, they have put in place independent UK national rights before Brexit-day and that, where possible (in view of novelty requirements), the same action be taken in relation to important registered designs.
The UK Government, in releasing these technical notices, aims to reassure the business community that IP rights will not be lost post-Brexit. However, significant uncertainties remain. We will continue to keep you advised of developments in this regard and to correspondingly calibrate our recommendations in these volatile times.
Do contact us if you have any questions.