On 24 September 2018, the UK Government published long-awaited guidance on how certain aspects of trade mark protection, and in particular EU trade mark applications, will be treated in the event that no Brexit deal has been agreed prior to the UK’s exit from the EU on 29 March 2019. This guidance is part of the “series of technical notices setting out information to allow businesses and citizens to understand what they would need to do in a ‘no deal’ scenario”. It is important to be aware that the published note is for guidance, only. It is not statutory legislation, which will follow.
EU Trade Mark Registrations
EU trade mark registrations shall enjoy continued protection and enforceability in the UK equivalent to UK trade mark registrations. They will be treated as if they had originally been filed in the UK. EU trade mark registrations will retain their EU priority date as well as any UK seniority right.
Right holders will obtain UK registered trade mark protection automatically. Right holders who do not wish to retain UK protection will be able to opt out of UK trade mark protection.
EU Trade Mark Applications
Owners of EU trade mark applications shall have a nine month period from the date of exit (currently 29 March 2019) to apply for equivalent UK trade mark protection – retaining the EU priority date. The usual UK application process and UK filing fees for trade marks will apply.
Right holders of pending EU trade mark applications will not be notified by the registries. There is no automatic continuity of application proceedings. It will be up to applicants (and their representatives) to take appropriate positive action.
International Trade Mark Applications and Registrations (IRs) designating the EU
The UK government intends to discuss continued protection in the UK of International trade mark registrations and applications designating the EU with the World Intellectual Property Organisation (WIPO). This means that, currently, no guidance for protection in the UK of IRs designating the EU is available.
Trade mark owners based outside the EU who do not currently hold a UK designation should consider filing a subsequent UK designation (in addition to any existing EU designation), particularly for key brands. We do not know if the UK Government will be able to persuade WIPO to agree to a special scheme allowing trade mark owners to keep the priority date of the EU designation for a subsequent UK designation in the context of Brexit.