EU registered trade marks and designs in the UK in a no-deal Brexit scenario

EU registered trade marks and designs in the UK in a no-deal Brexit scenario
July 22, 2019 sandersons
Sandersons - EU Trade Marks and Design Registration Post-Brexit

As the UK continues to argue about Brexit, businesses need to make plans.  While the European patent system is not tied to the EU and will be unaffected by Brexit, EU trade marks and registered designs are only valid within countries who are members of the EU.   If your business relies on an EU TM or design registration for protection in the UK you will need to be aware of what will happen after Brexit.

The latest guidelines from the UK government lay out their plans for what will happen to EU TM and design registrations in the event of a no-deal Brexit.

The key points are summarised below.

After the UK leaves the EU if there’s no deal

  • existing registered EU trade marks or registered Community designs held will continue to be valid in the remaining EU member states
  • protection of existing registered EU trade marks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden
  • rights holders will be notified by the UK IPO that a new UK right has been granted by publishing a notification and guidance on the IPO website
  • if rights holders do not want to receive a new comparable UK registered trade mark or design they will be able to opt out
  • provision will be made regarding the status of legal disputes involving EU trade marks or registered Community designs which are ongoing before the UK courts and more information will be provided on this before the point at which the UK exits the EU
  • If applications are pending at the time of exit, applicants will have a period of 9 months from that date to apply in the UK for the same protections, retaining the date of the EU application for priority purposes, as well as claims to earlier priority and UK seniority recorded on the corresponding EU application.  Right holders will need to meet the cost of re-filing the application in accordance with the UK application fee structure.
  • New applications for UK trade marks and registered designs will continue as they are now, and at the cost specified in the UK fee structure
  • UK applicants will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently

The most noticeable aspect of these implications is that while registered EU rights will have comparable UK rights automatically established free of charge, pending EU applications will be subject to the standard UK TM or design registration fees.

If you are considering applying for EU trade mark or design registrations, we would recommend that these are processed as soon as possible with the aim of having them granted before the exit date to make sure that you avoid the additional UK registration fees.

For more information about the latest government guidelines go to https://www.gov.uk/government/publications/trade-marks-and-designs-if-theres-no-brexit-deal/trade-marks-and-designs-if-theres-no-brexit-deal

If you would like to discuss your IP portfolio please contact us.

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