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Brexit: trade marks and designs – 10 things to know

ANALYSIS: While Brexit negotiations between the UK and EU are ongoing, the UK government and European Commission have found an agreement in principle that will alleviate many right holders’ concerns in respect of trade marks and designs.11 Jul 2018

On 19th March 2018, the negotiating parties issued a new version of the draft agreement on the withdrawal of the UK from the EU that deals with the complex issue of what will happen with EU trade marks and Community designs following the UK’s exit from the EU on 29 March 2019. Here are 10 things trade mark and design holders and their advisors should know:

  • There will be a transition period until 31 December 2020 during which the EU’s intellectual property regimes will continue to apply within the UK. The implication of the transition period is that it will largely be ‘business as usual’ for intellectual property rights until the end of 2020.
  • After the transition period, the UK has made a commitment to create an equivalent ‘cloned’ right in the UK for EU trade marks and Community designs registered and granted on or before 31 December 2020 without the need for re-examination. The cloned right will enjoy the same priority and, where appropriate, the seniority of a UK trade mark where claimed.
  • EU trade mark or Community design applications which are pending at the end of the transition period will not be automatically cloned. The applicant will have a period of nine months from the end of the transition period during which it can file an application in the UK with the same filing and priority dates as its EU counterpart.
  • Where a revocation, cancellation or invalidity action is pending against a registered EU trade mark or Community design on the last day of the transition period, and provided that the EU trade mark or Community design will be subsequently declared revoked or cancelled as a result of the action after the transition period, the cloned UK right shall be declared revoked or cancelled as well, provided that the grounds for invalidity apply to the UK.
  • The cloned UK trade mark shall not be revoked on the grounds that the corresponding EU trade mark has not been put to genuine use in the UK before the end of the transition period.
  • The UK shall take measures to ensure that owners of international trade marks or designs registered through the Madrid system for the international registration of marks designating the EU or through the Hague system for the international deposit of industrial designs and obtained before the end of the transition period, will continue to enjoy the same protection in the UK.
  • Following the transition period, the EU Intellectual Property Office (EUIPO) will not recognise the reputation of an EU trade mark which is based on use in the UK. Likewise, the UK IPO is unlikely to recognise a reputation claimed in respect of a UK trade mark if the reputation is claimed on the basis of the original EU trade mark outside of the UK. However, until the end of the transition period, a reputation claimed in respect of an EU trade mark will still apply to the UK.
  • The owner of an unregistered Community design made available to the public before the end of the transition period shall have a corresponding "enforceable IP right" in the UK.
  • IP rights which were exhausted before the end of the transition period will remain exhausted both in the EU and in the UK.
  • The cloned UK trade mark or design will enjoy the same protection period like its EU counterpart.

Whilst the draft agreement has been widely welcomed by the IP community, important points remain unresolved.

For example, the negotiating parties will still have to find an understanding as to whether there will be any costs associated with the automatic conversion process and who would bear those costs. In addition, the nature of a 'draft agreement' is that the fate of IP rights lives and dies with the overall outcome of the negotiations.

Although it would not appear to be in anyone’s interest, there is no absolute guarantee that a cliff edge Brexit can be averted. If the UK drops out of the EU without a withdrawal agreement a transition period would not apply. It would then be for the UK legislator to implement equivalent rights in the UK unilaterally.

This raises the question whether the duplication of trade marks in the EU and UK is necessary at this stage.

Technically, provided that the EU trade mark or the Community design matures to registration before the end of 2020, there is no need for a duplicate filing in the UK, provided that the withdrawal agreement comes into force. However, given the current uncertainties, caution would dictate to protect IP rights as thoroughly as possible, in particular considering the relative low cost in obtaining a registration in the UK.

Whilst we currently do not recommend filing additional applications for already registered EU trade marks or Community designs in the UK, we generally recommend considering dual-filings for new applications until a clearer picture emerges from the negotiations.

Another open point is whether UK practitioners will retain the right of representation in EU matters following Brexit, and vice versa, whether EU practitioners will be able to represent their clients before the UK IPO.

Florian Traub; Iain Connor; Triona Desmond and Matthew Harris are experts in trade mark and designs laws at Pinsent Masons, the law firm behind Out-Law.com.