Practical Brexit preparations for trade mark and design owners
Whilst the UK continues to make headlines on its route to leaving the EU, as the date moves closer, proprietors of trade marks and designs in the UK and EU must start making the necessary preparations for the possible outcomes.
It has been widely publicised that the EU and UK negotiators have reached an agreement on the terms of the UK’s withdrawal from the EU, subject to acceptance by the UK Parliament. The draft agreement confirms the commitment to clone EU IP rights (including those granted through the Madrid or Hague WIPO systems) onto the UK registers for free, maintaining priority and seniority. However, this only applies for registered rights. Any pending EU applications for trade marks or designs (including those trade marks currently under opposition) will not be cloned on to the UK Register. Therefore, we recommend pushing to resolve any oppositions against pending marks before 29th March 2019, and any EU applications that are unlikely to be registered by 29th March 2019 should now be accompanied with a corresponding UK application (or a priority claiming application filed within six months). In addition, some more detailed IP matters stipulated are that any IP rights exhausted before the end of transition will remain exhausted in the UK and EU, and existing EU GIs (Geographical Indications) will “remain protected in the UK until the future economic relationship comes into effect and supersedes those arrangements. Existing UK GIs will continue to be protected by the current EU regime.”
As has been widely publicised, the UK Parliament is unlikely to accept this withdrawal agreement, which could lead to either a “no deal Brexit” or a second referendum/vote if no mutually acceptable amendments of the withdrawal agreement can be settled upon.
Should a “no deal Brexit” arise, the UK Government has stated that it would also clone EU IP rights (but not currently those granted through the Madrid or Hague WIPO systems until the UK reaches the necessary agreement with WIPO) onto the UK registers for free, maintaining priority and seniority. However, again, this only applies for registered rights. They propose to allow a nine month period after Brexit (ie until 29th December 2019) in which applications can be filed for the same mark or design in the UK and retain the filing date (or priority date) of the corresponding pending EU application. Therefore, again, we recommend pushing to resolve any oppositions against pending marks before 29thMarch 2019, and any EU applications or designations of the Madrid or Hague WIPO systems that are unlikely to be registered by 29th March 2019 should now be accompanied with a corresponding UK application (or prepare for a priority claiming application filed within six months). In addition, given the current lack of any agreement with WIPO for a cloned right of EU designations, proprietors would be wise to file a designation for the UK to ensure their mark or design is protected. The more detailed elements state that exhaustion of rights will be recognised immediately post-Brexit, but not beyond a “temporary period” which may indicate a national or international exhaustion beyond this.
Chapman IP remains able to file and act for clients in EU Trade Mark and Design applications at the EUIPO, alongside national UK Trade Mark and Design registrations. Our trade mark and design team are qualified to act before this office, and will continue to be so. As ever, we remain committed to our clients and will continue to provide a first class service in all aspects of IP, at home and abroad.
To discuss any IP matters please email firstname.lastname@example.org, for trade mark specific matters please email email@example.com, or call the office on tel: +44 (0) 23 8000 2022 and chat to one of our qualified advisors.