On March 29, 2019, the United Kingdom (UK) will leave the European Union (EU). If this should happen without an agreement, i.e. in case of a “hard Brexit”, the situation of European Union trademarks and Community designs, currently protected also in the UK, will be as follows, according to information made available by the UK government:

Trademarks

Registered EU trademarks will continue to be protected in the UK as “comparable” trademarks. This effect will be automatic, without any application, and without any fees having to be paid. These rights will retain their respective priority and filing dates, as well as any UK seniority. These trademarks will eventually be entered on the register of the UK Intellectual Property Office (UKIPO). Trademarks registered under the Protocol to the Madrid Agreement and extended to the EU which have been accepted for protection by the European Union Intellectual Property Office (EUIPO) will also become “comparable” trademarks, as UK national trademarks, and not as UK extensions under the Madrid Protocol.

The term of protection for the resulting UK trademark registrations is the same as that of the original EU trademark or Madrid Protocol registration. Renewals will have to be effected at the UKIPO, according to the terms set by the UK.

Applications for the registration of EU trademarks pending on March 29, 2019, may be re-filed as UK applications, within a period of nine months from the Brexit date. Such applications will retain their EU filing, priority or seniority date. This applies also to trademarks registered under the Protocol to the Madrid Agreement and extended to the EU which have not been accepted for protection by the EUIPO prior to March 29, 2019.

Designs

Registered Community designs will continue to be protected in the UK as “re-registered” designs. This effect will be automatic, without any application, and without any fees having to be paid. These designs retain their EU priority or filing date. These rights will eventually be entered on the register of the UKIPO. Their term of protection will be the same as that of the original Community designs. They will have to be renewed at the UKIPO, according to the terms set by the UK. Designs registered under the Hague Agreement Concerning the International Registration of Industrial Designs and extended to the EU which have been accepted for protection by the EUIPO will also become “re-registered” designs, as UK national designs, and not as UK extensions under the Hague Agreement.

Applications for the registration of Community designs pending on March 29, 2019, may be re-filed as UK applications by filing a corresponding application, within a period of nine months from the Brexit date. Such applications will retain their EU filing or priority date. This applies also to designs registered under the Hague Agreement and extended to the EU which have not been accepted for protection by the EUIPO prior to March 29, 2019.

Unregistered Community designs, which have come into existence through a first disclosure to the public in the EU before March 29, 2019 and are protected for three years, will continue to be protected in the UK for the remainder of their term of protection, as “continuing unregistered Community designs”.

Professional representation

Lawyers and trade mark attorneys currently representing EU trademarks and Community designs before the EUIPO will be authorised to represent their clients also before the UKIPO with regard to “comparable” UK trademarks and “re-registered” designs, as well as with regard to “re-filed” applications.

Advice to clients

In case of a “hard Brexit”, nothing will have to be done with regard to existing EU trademark registrations and Community design registrations

If the renewal of such registrations becomes due soon after the Brexit date, particular attention must be paid regarding the renewal of the resulting UK rights. The UKIPO announced that it would send renewal notices to the proprietors of the respective trademarks and designs have been recorded in the register of the UKIPO. Thus, attention must be paid to such renewal notices, which must not be confused with fraudulent “renewal” letters. Please contact us if you are uncertain whether such payment requests in fact originate from the UKIPO, or from fraudulent free riders. 

As regards pending EU trademark and Community design applications, there will be a period of nine months from the Brexit date for re-filing these applications at the UKIPO. If continued protection in the UK is desired, clients should contact us regarding the best way forward.

Please note that the above only provides a very brief overview regarding the most important consequences of a “hard Brexit” on your intellectual property rights. Should you wish to receive more detailed information, please feel free to contact us.

Fecha

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