In a communiqué last month, the EU announced that, in the absence of any agreement to the contrary, attorneys and other representatives ‘that are domiciled or have a seat in the UK only’ will, following the UK’s departure from the EU, lose representation rights before the European Union Intellectual Property Office (EUIPO).

Marks & Clerk has had a presence in the European Union for nearly 30 years, with offices in France and Luxembourg. As such, the UK’s leaving the EU will not impact our ability to serve clients in the UK or the EU, or to make representations before the EUIPO. Our attorneys in the UK and the EU work together seamlessly, and will continue to do so, regardless of the outcome of the UK’s negotiations with the EU. Furthermore our dedicated Brexit Committee continues to monitor progress closely, ensuring we provide the best possible advice on protecting intellectual property.

While the UK is leaving the EU, Marks & Clerk is not.

Negotiations on a Brexit settlement between the EU and the UK are ongoing and nothing is yet certain. In the event that no agreement is reached to the contrary however, the EU communiqué also announced that: ‘EU rules on EU trade marks and community designs will no longer apply in the United Kingdom’.

Below we outline a number of strategies available to EUTM and Community design holders wishing to mitigate the risk of losing intellectual property protection post-Brexit.

EU Trade Marks

In the absence of any agreement to the contrary, the possibility exists that EUTMs will no longer apply in the UK following Brexit. Even in this scenario however, the prevailing view remains that it would be commercially unacceptable to deprive proprietors of EUTMs of the registered trade mark protection they previously enjoyed in the UK via their EUTM following Brexit and the EU’s position statement on intellectual property rights states that holders of Community (i.e. EU) rights should not suffer any loss of protection on Brexit.

The UK is a key territory for EUTM proprietors who do not already have an equivalent, separate UK trade mark (UKTM).

As such, the most risk-averse course would be to file a UKTM now – at least in respect of any core marks – in order to ensure that registered trade mark protection in the UK is maintained. We recommend that advice be obtained and decisions made on a case-by-case basis.

EU trade marks seniority

Currently, if a trade mark proprietor owns a national trade mark in an EU Member State and subsequently obtains an EUTM registration, the proprietor can surrender or allow the earlier national trade mark to lapse but retain the benefit of the earlier mark, in particular its earlier filing date, by claiming for the EUTM the “seniority” of the earlier trade mark. This gives the proprietor of the EUTM the same rights as he would have had if the earlier trade mark had continued to be registered.

The EU has also made clear that, again subject to there being no agreement to the contrary: “All existing seniority claims in EU trade marks based on national trade mark rights in the United Kingdom will cease to have an effect in the EU as from the withdrawal date”

Again it is possible that the UK government could enter EUTMs onto the UK trade mark register following Brexit as new UK (national) trade marks, thus conferring some continuity here.

In the meantime, until this uncertainty is resolved, it would be prudent for EUTM owners claiming seniority from an existing UKTM to refrain from surrendering the earlier trade mark or allowing it to lapse.

Community Designs

The EU has previously asserted that holders of Community designs rights should not lose protection in the UK by reason of Brexit and the UK may well be of the same view, but it is not known precisely what form these new UK rights may take.

EU registered designs

Uncertainty remains as to how EU registered designs will be recognised in the UK following Brexit. In light of the uncertainty, it has been reported that UK Registered Design filings increased by 95% in August 2016 compared with August 2015. It therefore appears that many designers are applying for both UK and EU registered designs.

For the time being this would appear to be the safest option for designers until future provisions become clearer. This is even more attractive given that the UKIPO has recently reduced its filing fees for UK registered designs.

EU unregistered designs

Under the EU designs regulation, rights in unregistered Community designs subsist automatically for up to three years from the date on which the design is first made available within the EU. Post-Brexit, if EU design law in the UK is repealed in its entirety, the unregistered protection afforded to design owners will be more limited, in particular, it will no longer be possible to obtain unregistered protection for surface decoration. Until negotiations regarding the UK’s departure from the EU have progressed further, it will not be possible to determine the full extent of Brexit upon design protection in the UK.

Given the relatively low cost of applying for registered designs, in the short term designers can put themselves in the most secure position by filing registered design applications in both jurisdictions. Given also the uncertainties surrounding unregistered design rights in both the UK and the EU, designers may wish to consider applying for registered protection in one or both territories for potentially valuable designs, rather than being reliant on any such automatic unregistered rights.