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The Great British Break Off: trade marks and designs through the Brexit transition

Date: 22 October 2018

 

We have written (14 May 2018) on the aspects of the Draft Withdrawal Agreement between the EU and the UK and how it provides for continuity for holders of registered EU trademark rights, Community design rights or Community plant variety rights, and we have also written (26 September 2018) about the effect a hard Brexit will have (or indeed not have) on IPRs.

 

Now we summarize how granted and pending EU trade marks and designs will be affected in the two scenarios, and what each scenario means for rightsholders and applicants.

 

In event of a deal 

 

See: Draft Withdrawal Agreement and Joint statement on Withdrawal Agreement 

 

Transition period

Article 121 of proposed Withdrawal Agreement provides for transition period starting from when UK exits EU at 11pm on 29 March 2019 and ending on 31 December 2020.

 

Registered EUTMs and RCDs

Following the transition period, owners of EU trade marks (EUTMs), Community designs and Community plant variety rights that have been granted before the end of the transition period will “without any re-examination, become the holder of a comparable registered and enforceable right in the UK” (Article 50 of the proposed Withdrawal Agreement).

 

Pending applications

Assuming a deal is struck and the transition period is agreed, we said in the latest issue of MYM that we recommend applicants continue to file EUTM and International (EU) applications as usual until at least 31 December 2019.  Based on the EUIPO’s speed of registration, the majority of routine EUTM and International (EU) applications filed by that date should have been granted before the transition period expires on 31 December 2020 and will automatically convert into equivalent national UK registrations, so there will be no need to file a separate UK application:

 

 

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The owner of a EUTM or RCD still pending at the end of the transitional period (December 2020) will be entitled to file a corresponding UK application within 9 months from the end of the transition period – i.e. to September 2021 (Draft Withdrawal Agreement Article 55.1). This new UK application will retain the filing date of the EUTM (and priority date if applicable). But it's not a free option.

 

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International Registrations

UK Government will arrange a system with WIPO to allow EU designations of International Registrations to be converted into, or re-registered as, national UK Trade Mark registrations, retaining their original filing or priority date.

 

Trade marks and registered designs can be obtained through the international Madrid and Hague systems – international registrations specifically designating the UK will be unaffected by the UK leaving the EU. 

 

Those who have obtained protection for international registrations of trade marks or designs designating the EU before the end of the transition period shall continue to enjoy protection for those international trade marks and designs after the transition period (Article 52 of the proposed Withdrawal Agreement).

 

Unregistered Design Right

Holders of unregistered Community design (UCD) rights that arose before the end of the transition period will become owners of corresponding rights in the UK (with the ‘same level of protection’ as the corresponding UCD) after the transition period (Article 53 of the proposed Withdrawal Agreement).

 

In event of no-deal

 

See: Trade marks and designs if there’s no Brexit deal

 

Transition period

None – this is the so-called “cliff-edge” scenario.

 

International Registrations

UK signed up to the Hague System for the International Registration of Industrial Designs on June 13, 2018, so applicants can specify UK designation.

 

Technical notice published on 24 September 2018 stated that “The government will work, including with the World Intellectual Property Organization, to provide continued protection in the UK after March 2019 of trade marks and designs filed through the Madrid and Hague systems and which designate the EU. This also includes practical solutions for pending applications.”

 

Registered EUTMs and RCDs

For existing registered EUTMs and registered Community designs, the UK Government has said that it will provide a new equivalent trade mark or design right registered in the UK, which will come into force at the point of the UK’s exit from the EU.  It added that the new UK right will be provided with “minimal administrative burden”. There is no confirmation that this will not involve payment of a fee.

 

Right-holders will be notified that a new UK right has been granted; any business, organisation or individual that does not want to receive a new comparable UK registered trade mark or design will be able to opt out.

 

Pending EUTMs and RCDs

Applicants will have a period of nine months from the date of exit to re-file with the UK IPO under the same terms for a UK equivalent right, using the normal application process for registered trade marks and registered designs in the UK but retaining the date of the EU application for priority purposes.

 

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Applicants with pending applications for an EUTM or a registered Community design will not be notified and after exit will need to consider whether they refile with the UK IPO in order to obtain protection in the UK. Re-filing will incur a standard trade mark filing fee.

 

Unregistered Design Right

Unregistered Community designs protect a range of design features including two- and three-dimensional aspects such as surface decoration and product shape. The unregistered Community design provides three years of protection from the date that the design is first made available to the public (‘disclosed’) within the EU.

 

The unregistered Community design is entirely separate from the UK’s own unregistered design right, which protects product shape and configuration but cannot protect any form of surface decoration. The UK unregistered design right will continue to exist for designs first disclosed in the UK. 

 

UK, EU and third country designers will be provided with continued protection for those designs first disclosed in EU27 member states and already protected by an unregistered Community design right at the point that the UK exits the EU “with no action required by the right holder”.

 

Through the new supplementary unregistered design right, designs which are disclosed in the UK after the UK exits the EU will be protected in the UK under the current terms of the unregistered Community design (which means that protection for surface decoration will be available)

 

Summary

In the event of a no-deal Brexit, the Government has confirmed that existing registered EUTMs and registered Community designs will be protected under a new equivalent trade mark or design right registered in the UK, but the details of how this will be achieved are unclear, and there’s no confirmation that this will not involve payment of a fee.

 

Although the Government has said that the system will involve “minimal administrative burden”, the UK IPO is likely to be under some pressure and, therefore, the provision of an additional nine months for re-filing applications for EUTMs and Community designs pending the point of the UK’s exit is welcome news.  Applicants wishing to take advantage of the offer to re-file will need to remember that they will not be notified, and re-filing will incur a standard trade mark filing fee.

 

The Government has also confirmed that the national unregistered system will be adapted to replace aspects of the Community unregistered design right (such as protection for surface design) that will be lost as a consequence of Brexit; this supplementary unregistered design right will be provided with no action required on the part of holders of existing unregistered Community design rights for designs disclosed in the EU prior to Brexit.  In addition, new designs disclosed in the UK after Brexit will not only be able to benefit from the existing UK unregistered design regime but also the new supplementary unregistered design right.

 

Although the finer points remain unclear, the technical notice has confirmed that, even in the event of a no-deal Brexit, businesses and citizens in the UK will still have many options open to them for protection of trademarks and designs in the UK and the EU.

 

Representation at the EUIPO

 As the reader will no doubt be aware, the question of whether the UK should rejoin the EEA (with all the requirements and commitments that this would entail), is currently the subject of much debate within the UK. Under the current rules of the EUIPO, professionals who are qualified in member states of the EEA are entitled to represent others before the EUIPO. If, therefore, the UK leaves the EU and does not rejoin the EEA, UK Chartered Trade Mark Attorneys will not be able to act before the EUIPO. As far as Maucher Jenkins is concerned, we are a pan-European firm with offices in Munich and Freiburg, as well as London and Farnham. Therefore, even in the event where the UK did not remain in the EEA, due to our strong presence in Germany, we would still be entitled to represent clients in EUTM and RCD matters and would be well-placed generally to continue delivering our services as usual, namely advising clients around the world regarding IP rights within and outside the EU.

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