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As the UK continues on its uncertain journey to a likely Brexit on 31 October 2019, the UK government has issued further guidance on what will happen with European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) that currently protect trade marks and designs throughout the EU.

If Brexit occurs, EUTMs and RCDs will cease to offer protection in the UK.  However, the UK government’s position is that under either a negotiated withdrawal or a “no deal” Brexit, the UK will grant a free UK registration for every registered EUTM and RCD.  That will result in over 1.7million new registrations in the UK!

Late last month the UK government sought to provide further clarity by:

  • on 19 September 2019 publishing new information for both trade marks and designs; and
  • on 20 September 2019 withdrawing the technical notices on a “no deal” scenario that had originally been published on 24 September 2018.

summary

In summary, trade marks and designs that are registered in the EU will automatically be replicated by UK registrations at no cost.

Where the applications are still pending in the EU at the time of Brexit, the applicant will need to file a new application seeking registration in the UK to secure their rights there.  Standard application fees will apply to these applications and a UK Attorney will need to be appointed as the address for service (this will involve additional costs).

Design applications must be lodged in the UK within nine months of Brexit.  UK trade mark applications can be lodged later, but if lodged during that nine month window they will take advantage of the earlier priority date of the EUTM application.  Taking advantage of the earliest possible priority date can be critical at times on whether the trade mark is registrable or not.

These arrangements are generally in line with the arrangements previously published by the UK Intellectual Property Office in 2018.

EUTM registrations

On the Brexit day, all holders of EUTM registrations will automatically receive a corresponding UK trade mark registration.  No new trade mark registration certificates will be issued but the registration rights will appear on the Intellectual Property Office‘s database.  This is expected to affect more than 1 million EUTMs.

If the EUTM was not already being managed by lawyers in the UK, it is advisable that UK lawyers be appointed as the address for service for these new UK registrations.  Many UK firms are offering this service at no cost.

This process may leave some trade mark owners with two UK registrations.  For some time, the standard advice has been to seek separate registration in the UK in addition to EUTM registration, to manage the Brexit uncertainty risk.  Those trade mark owners with two UK registrations may choose to opt out of having an equivalent UK right issued.  The simpler process would simply be to let one of the UK registrations lapse at the time of renewal.

The UK government recognises that where a EUTM is due to expire in the six months following the Brexit day, there will be insufficient time for the Intellectual Property Office to issue renewal notices on the newly-created UK registrations.  Late renewal fees will therefore be waived for the six months following Brexit.

EUTM pending applications

For the approximately 85,000 current EUTM applications, no equivalent UK rights will automatically be created.  Instead, EUTM applicants will have nine months to apply for registration in the UK and enjoy the same priority date as the EUTM application.  The UK applications will be subject to the same fees as any other UK trade mark application.

madrid protocol trade marks designating the EU

With international registrations designating the EU under the Madrid Protocol trade marks system, the treatment will be essentially the same as with ordinary EUTMs.  Where a statement of protection was issued by the European Intellectual Property Office before Brexit then a comparable international registration designating the UK will be automatically created.

There is no need to appoint UK lawyers as the address for services for registrations under the Madrid Protocol.

For Madrid Protocol applications designating the EU that have not yet received a statement of protection prior to Brexit, a separate UK trade mark application will need to be lodged outside of the Madrid Protocol system.  Lodging outside of the Madrid Protocol system is the only way to take advantage of the earlier priority date that applies in the EU.  The UK registration can subsequently be brought into the international registration under the Madrid Protocol by designating the UK after the separate UK trade mark has been registered (see paragraphs 53 to 59 here).

RCD registrations

As with trade marks, on the Brexit day owners of RCDs will automatically be granted UK design registrations on the same terms.  This is expected to affect approximately 700,000 RCDs.  If the RCD is not already being managed by UK lawyers, it is advisable to also appoint a UK firm as the address for service for the new UK design registration.

As with EUTMs, the UK government recognises that the logistics of providing renewal notices in the period immediately following Brexit will be difficult.  For new UK designs that expire in the six months after the Brexit day, the usual late fee on a renewal will be waived during those six months.

RCD pending applications

Pending RCD applications will not automatically be granted UK rights.  Applicants will have nine months from the Brexit day to apply for registration in the UK and retain the priority date of the RCD application.

Recognition of the RCD priority date in the UK is important because publicising a design before its priority date will extinguish the newness of the design, rendering it unregistrable.  Unless the UK design application is lodged within that nine month window, it cannot be registered later.

RCDs with deferred publication

It is possible for the publication of an RCD to be deferred for up to 30 months.  In those cases, the UK will not automatically grant UK registration to those RCDs.  Instead, the RCD will be treated as if it was a pending application, with the owner having nine months post-Brexit to apply for registration in the UK.

The maximum period of deferred publication in the UK will be the earlier of the end of the RCD deferment period or 12 months.

necessary action

If you currently own an EUTM, RCD or an international registration under the Madrid Protocol that designates the EU, there is nothing that you need to do.

If you are a current applicant then within nine months after Brexit you will need to apply for separate registration in the UK.

If you are planning to apply for trade mark or design registration in the EU then you should lodge a UK application at the same time to ensure that you are also protected in the UK.

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Brexit implications for IP – free UK rights for some

03 October 2019
nils versemann

As the UK continues on its uncertain journey to a likely Brexit on 31 October 2019, the UK government has issued further guidance on what will happen with European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) that currently protect trade marks and designs throughout the EU.

If Brexit occurs, EUTMs and RCDs will cease to offer protection in the UK.  However, the UK government’s position is that under either a negotiated withdrawal or a “no deal” Brexit, the UK will grant a free UK registration for every registered EUTM and RCD.  That will result in over 1.7million new registrations in the UK!

Late last month the UK government sought to provide further clarity by:

  • on 19 September 2019 publishing new information for both trade marks and designs; and
  • on 20 September 2019 withdrawing the technical notices on a “no deal” scenario that had originally been published on 24 September 2018.

summary

In summary, trade marks and designs that are registered in the EU will automatically be replicated by UK registrations at no cost.

Where the applications are still pending in the EU at the time of Brexit, the applicant will need to file a new application seeking registration in the UK to secure their rights there.  Standard application fees will apply to these applications and a UK Attorney will need to be appointed as the address for service (this will involve additional costs).

Design applications must be lodged in the UK within nine months of Brexit.  UK trade mark applications can be lodged later, but if lodged during that nine month window they will take advantage of the earlier priority date of the EUTM application.  Taking advantage of the earliest possible priority date can be critical at times on whether the trade mark is registrable or not.

These arrangements are generally in line with the arrangements previously published by the UK Intellectual Property Office in 2018.

EUTM registrations

On the Brexit day, all holders of EUTM registrations will automatically receive a corresponding UK trade mark registration.  No new trade mark registration certificates will be issued but the registration rights will appear on the Intellectual Property Office‘s database.  This is expected to affect more than 1 million EUTMs.

If the EUTM was not already being managed by lawyers in the UK, it is advisable that UK lawyers be appointed as the address for service for these new UK registrations.  Many UK firms are offering this service at no cost.

This process may leave some trade mark owners with two UK registrations.  For some time, the standard advice has been to seek separate registration in the UK in addition to EUTM registration, to manage the Brexit uncertainty risk.  Those trade mark owners with two UK registrations may choose to opt out of having an equivalent UK right issued.  The simpler process would simply be to let one of the UK registrations lapse at the time of renewal.

The UK government recognises that where a EUTM is due to expire in the six months following the Brexit day, there will be insufficient time for the Intellectual Property Office to issue renewal notices on the newly-created UK registrations.  Late renewal fees will therefore be waived for the six months following Brexit.

EUTM pending applications

For the approximately 85,000 current EUTM applications, no equivalent UK rights will automatically be created.  Instead, EUTM applicants will have nine months to apply for registration in the UK and enjoy the same priority date as the EUTM application.  The UK applications will be subject to the same fees as any other UK trade mark application.

madrid protocol trade marks designating the EU

With international registrations designating the EU under the Madrid Protocol trade marks system, the treatment will be essentially the same as with ordinary EUTMs.  Where a statement of protection was issued by the European Intellectual Property Office before Brexit then a comparable international registration designating the UK will be automatically created.

There is no need to appoint UK lawyers as the address for services for registrations under the Madrid Protocol.

For Madrid Protocol applications designating the EU that have not yet received a statement of protection prior to Brexit, a separate UK trade mark application will need to be lodged outside of the Madrid Protocol system.  Lodging outside of the Madrid Protocol system is the only way to take advantage of the earlier priority date that applies in the EU.  The UK registration can subsequently be brought into the international registration under the Madrid Protocol by designating the UK after the separate UK trade mark has been registered (see paragraphs 53 to 59 here).

RCD registrations

As with trade marks, on the Brexit day owners of RCDs will automatically be granted UK design registrations on the same terms.  This is expected to affect approximately 700,000 RCDs.  If the RCD is not already being managed by UK lawyers, it is advisable to also appoint a UK firm as the address for service for the new UK design registration.

As with EUTMs, the UK government recognises that the logistics of providing renewal notices in the period immediately following Brexit will be difficult.  For new UK designs that expire in the six months after the Brexit day, the usual late fee on a renewal will be waived during those six months.

RCD pending applications

Pending RCD applications will not automatically be granted UK rights.  Applicants will have nine months from the Brexit day to apply for registration in the UK and retain the priority date of the RCD application.

Recognition of the RCD priority date in the UK is important because publicising a design before its priority date will extinguish the newness of the design, rendering it unregistrable.  Unless the UK design application is lodged within that nine month window, it cannot be registered later.

RCDs with deferred publication

It is possible for the publication of an RCD to be deferred for up to 30 months.  In those cases, the UK will not automatically grant UK registration to those RCDs.  Instead, the RCD will be treated as if it was a pending application, with the owner having nine months post-Brexit to apply for registration in the UK.

The maximum period of deferred publication in the UK will be the earlier of the end of the RCD deferment period or 12 months.

necessary action

If you currently own an EUTM, RCD or an international registration under the Madrid Protocol that designates the EU, there is nothing that you need to do.

If you are a current applicant then within nine months after Brexit you will need to apply for separate registration in the UK.

If you are planning to apply for trade mark or design registration in the EU then you should lodge a UK application at the same time to ensure that you are also protected in the UK.