Brexit: Confusion everywhere, but we’re sure about your IP!

The UK government will continue to protect all existing registered European Union trademarks and registered Community designs as it leaves the European Union either with or without a deal with the European Union. Some UK rightholders and agents, however, may be at a disadvantage.

In any scenario, including one which does not involve a deal between the United Kingdom and the EU, the UK government will seek to minimize disruption for businesses and to provide for a smooth transition. In short, the UK government will continue to protect all existing registered European Union trademarks and registered Community designs as it leaves the European Union either with or without a deal. The United Kingdom will do so by creating over 1.8 million comparable UK rights which will be granted automatically and free-of-charge.

This means that right holders with a registered EU trademark or registered Community design will have a new UK equivalent right granted that will come into force automatically at the point of the UK’s exit from the EU on October 31^st 2019 or before if and when the UK Parliament approves the Withdrawal Agreement. The new UK right will be provided with no administrative burden and the trademark or design will be treated as if it had been applied for and registered under UK law. This means that these registered trademarks and designs:

• will be subject to renewal in the UK,
• can form the basis of proceedings before the UK Courts and the Intellectual Property Office’s Tribunal, and
• can be assigned and licensed independently from the EU right.

Within a period of 9 months after the exit, EU trademark and Community design applications which are ongoing at the date of exit may be re-filed with the UK Intellectual Property Office under the same terms for a UK equivalent right, using the normal application process for registered trademarks and registered designs in the UK. This means that, for a period of 9 months after the exit, the UK government will recognize filing dates and claims to earlier priority and UK seniorities recorded on the corresponding EU application. Holders of such EU trademark and Community design applications taking this step will need to meet the cost of re-filing the application in accordance with the UK application fee structure.

So far so clear! However, confusion remains not only because of the unknown date of Brexit but also with regard, amongst others, to these troublesome caveats:

• UK holders of a .eu domain name will no longer meet the requirements for .eu domain name registrations and will lose their .eu domain names, unless the said domain names are transferred to new holders within any of the remaining 27 EU Member States;
• Right holders who have neither their domicile nor a real and effective industrial or commercial establishment in the European Economic Area should appoint an agent qualified for representation before the EUIPO;
• Agents who after Brexit day no longer qualify for representation before the EUIPO will automatically be removed from the official list of representatives before the EUIPO, will not be able to access and use the online user platform anymore and their submissions or applications, if any, will not be legally valid anymore.
• It may well be cost effective to renew registered EU trademarks and Community designs as soon as the renewal window opens, i.e. to avoid additional costs for the renewal of the corresponding UK rights due for renewal shortly after Brexit day.

Hence, although most critical issues appear to be resolved, we do strongly advise that you anticipate the situation and take appropriate measures to secure your rights and to avoid unnecessary costs and difficulties.

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