EU Trade Marks and Community Designs after Brexit

Jane Lambert

At present it is possible to register a trade mark with the European Union Intellectual Property Office ("EUIPO") for the whole European Union including the United Kingdom as an EU trade mark ("EUTM"). Similarly, it is possible to register a design with the EUIPO for the whole EU including the UK as a registered Community design ("RCD").  Designs that are capable of being registered as RCDs are protected automatically from copying for 3 years from being made available to the public as unregistered Community designs ("UCD"). All those rights were created by regulations made under EU treaties that cease to apply to the UK when it leaves the EU.

If HM government concludes a withdrawal agreement with the EU before 29 March 2019, those regulations will continue to apply to the UK until 31 Dec 2020 when it is hoped that a new relationship with the EU will be in place.  If the UK leaves on 29 March 2019 without a withdrawal agreement, the provisions contained in the regulations will be preserved in the UK by s.3 of the European Union (Withdrawal) Act 2018.  The regulations will, of course, continue to apply in the states that remain in the EU.

It appears from the guidance Trade marks and designs if there’s no Brexit deal that legislation will be introduced to enable applicants for an EUTM or RCD at the time of Brexit to apply to the UK Intellectual Property Office ("the IPO")  for simillar trade mark or registered design protection.  They must make their application within 9 months of Brexit.  They will be able to retain the date of the EU application for priority purposesI.   Owners of EUTMs and RCDs will be able to convert their registrations into British trade marks or registered designs "with minimal administrative burden."  The guidance states that the "UK is also working, including with the World Intellectual Property Organisation, to provide continued protection in the UK from March 2019 for trade marks and registered designs filed through the Madrid and Hague Systems, and designating the EU as the area where they apply."

The implications for EUTM and RCD owners will be as follows:

• "existing registered EU trade marks or registered Community designs held will continue to be valid in the remaining EU member states
• protection of existing registered EU trade marks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden
• right holders will be notified that a new UK right has been granted. Any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out
• provision will be made regarding the status of legal disputes involving EU trade marks or registered Community designs which are ongoing before the UK courts and more information will be provided on this before the point at which the UK exits the EU
• applicants with a pending application for an EU trade mark or a registered Community design at the point of exit will be able to refile, within nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes
• applicants with pending applications for an EU trade mark or a registered Community design will not be notified and after exit will need to consider whether they refile with the Intellectual Property Office to obtain protection in the UK
• new applications will be eligible to be filed in the UK for UK trade marks and registered designs as they are now, and at the cost specified in the UK fee structure
• UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently,"

Finally, the guidance announces that a new intellectual property right, to be known as a "supplementary unregistered design right" with the characteristics of an UCD, will be established.  The guidance notes:

• "existing unregistered Community designs will continue to be valid in the remaining EU member states
• protection of existing unregistered Community designs in the UK will be provided for with no action required by the right holder
• provision will be made regarding the status of legal disputes involving unregistered Community designs which are ongoing before UK courts."

The EUIPO published frequently asked questions on the impact of the United Kingdom's withdrawal from the European Union on the European Union trade mark and the Community design on 18 Jan 2018 and a notice to holders of, and applicants for, EUTM and RCD on 1 Dec 2017,

Anyone wishing to discuss this article or Brexit generally should call me on +44 (0)20 7404 5252 during the usual office hours or send me a message through my contact page.