Brexit and trade marks: an update

Posted by Ben Evans on
On 25 September 2018 the UK Intellectual Property Office ("IPO") updated its guidance on Brexit and its impact on trade marks, specifically EUTMs.

Whilst the UK Government and the EU have been negotiating, for some time, to agree upon the manner in which the UK leaves the EU, no such agreement has been reached. Both parties have previously made clear that any deal will involve the owners of registered EUTMs being automatically granted equivalent UK registrations at no cost.

However, with the likelihood of a 'no deal' Brexit increasing the IPO's latest guidance covers the impact on EUTMs if there is no deal. Before 29 March 2019 (or, if there is a transition arrangement then before 31 December 2020) EUTMs will be unaffected and will continue to provide protection across the EU (including the UK).

After March 2019 (December 2020 if there is a transition arrangement) the UK government have confirmed that all existing registered EUTMs will continue to be protected in the UK through the granting of equivalent UK registrations. Whilst the process for granting such equivalent rights hasn't yet been publication it will be an automatic process, but with an opt-out for any rights holders that may not want a UK registration, and will not involve any cost on the part of the rights holder.

The resulting UK registration will, thereafter, be subject to renewal in the UK, can form the basis for proceedings in the UK, can be challenged for invalidity/non-use in the UK and can be assigned and licensed independent form the EUTM from which it originated.

Perhaps the biggest impact will be felt by the holders of EUTM applications that are pending at Brexit (i.e. after March 2019/December 2020). Such applicants will not be automatically granted an equivalent UK application and, instead, will have a period of 9 months to file an equivalent UK application which will benefit from the same filing/priority/seniority date as the EUTM from which it originated. Importantly however the holder will need to pay for this new UK application.

It is expected that International Registrations, designating the EU, will be dealt with in the same way as EUTMs but whilst the UK government is discussing the matter with WIPO the details of those discussions has not yet been revealed.

In summary, if there is no deal then:

  • EUTMs continue to apply in the UK up until 29 March 2019 (December 2020 if there is a transition arrangement);
  • After March 2019 (December 2020):
    • the holders of registered EUTMs will automatically be granted an equivalent UK registration, at no cost;
    • the holders of pending EUTM applications will have 9 months (i.e. until the end of 2019 (September 2021 if there is a transition arrangement)) to apply for an equivalent UK application taking advantage of the same filing/priority/seniority date as the EUTM from which it originated, this will need to be paid for as per any UK application.
    • For the owners of International Registrations designating the EU it’s a case of watching this space.

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Ben is a dual-qualified Solicitor and chartered trade mark attorney and advises clients on both contentious and non-contentious intellectual property matters.

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