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‘No deal’ Brexit guidance on trade marks and designs issued by UK Government

This week, the UK government issued guidance for trade marks and designs should a ‘no deal’ scenario arise from Brexit negotiations. The full document can be found here: https://www.gov.uk/government/publications/trade-marks-and-designs-if-theres-no-brexit-deal/trade-marks-and-designs-if-theres-no-brexit-deal.  It should be highlighted that this is a guidance note and is not the final arrangement.  A summary of the main points are listed below:

  • Protection of existing registered EU trade marks or Registered Community Designs in the UK will be granted a new, equivalent UK right with minimal administrative burden but there is no comment on compulsory forms or fees.  Proprietors will be notified that a new UK right has been granted and given the option to opt out. This would seem to imply that new trade marks and designs will be added to the UK register without any examination by the UK IPO.  Given that there are over 1.7 million EU trade marks and registered designs, let alone the 200,000 EU designations of International Registrations, this may be just as well.
  • 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 although no details of these provisions were provided.
  • Applicants with a pending application for an EU trade mark or a Registered Community Design at the point of exit will not be notified and after exit will need to consider whether they refile to obtain protection in the UK but will be able to refile within nine months from the date of exit (ie provisionally by 29 December 2019), retaining the EU application date for priority purposes.
  • UK applicants will continue to be able to apply for EU trade mark or Registered Community Design.
  • The government is working to provide for continued protection in the UK from exit day onwards of registered trade marks and registered designs filed through the Madrid and Hague systems which designate the EU.
  • No  comments have been made about the status of ongoing contentious issues at the EUIPO such as revocations, invalidations and oppositions. It is assumed that these matters will be allowed to remain at the EUIPO until completion.

Of particular importance are pending applications and registrations at the date of exit as the mirrored UK rights will only apply to registered rights. Therefore, to avoid the necessity to refile and/or potentially revisit opposition proceedings or negotiations, these matters must be concluded and a certificate of registration issued by the date of exit, at the moment being 29 March 2019. Of course, this strategy could also be employed by the opposing party to force the applicant into refiling and revisiting oppositions and/or negotiations. Parties involved in such matters must act prudently and swiftly to ensure that these matters can be concluded to avoid such scenarios where possible. In addition, it is worth considering filing a EU application alongside any UK application to ensure that a basis to oppose any future EU trade mark applications is maintained as UK trade mark rights will no longer be grounds to oppose new EU applications.

Although many parties are lobbying to minimise or prevent the effects of Brexit on EU trade mark and design rights, due to the uncertainties surrounding these negotiations and lobbying, our advice is to ensure continued and complete protection of marks/designs, UK applications should be filed now for any that are not already registered in the UK alone. In this way, your mark/design will be protected in the UK regardless of any failure to secure satisfactory transitional or long-term solutions to the removal of the UK from the EU and the associated intellectual property rights.  Even the government guidance issued this week is not legally binding, could be changed, amended or simply not implemented in full.  Therefore, the only way to ensure that marks and designs are ‘Brexit ready’ is to file a UK trade mark application alongside a pending or existing EU trade mark application or registration. Also, this provides a chance to review the rights and update accordingly, or simply provide a new non-use period to minimise any validity vulnerabilities through non-use.  Assuming the government’s guidance is implemented, this strategy may lead to a duplication of registrations which can be allowed to lapse at the next renewal date.

Should you have any questions or want further information on any of the issues discussed above, please do not hesitate to contact Rebecca Dobson at Chapman IP at Rebecca.dobson@chapmanip.com or 023 8000 2022.

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