The impact of a No Deal Brexit on trade marks and designs – UK Government advice released on 24 September 2018.

As part of the UK Government’s preparations for a possible “hard Brexit”, it has published a set of guidance notes on how intellectual property rights would be affected if the UK leaves the EU in March 2019 with no deal. This is part of a series of technical notices being issued by the Government to assist businesses in their preparations, although it is widely anticipated that an agreement between the UK and EU will still be possible.

The UK Government has confirmed that it will ensure that an equivalent enforceable registration will be provided for existing EU trade mark registrations and registered Community designs. The creation of the equivalent trade mark or design registration in the UK will be at minimal administrative burden. The registered owner will be informed that a UK right has been granted, but will have the option to opt out.

For EU trade mark applications and Community designs which are pending at the time of the actual exit from the EU, the Government will provide an option for the applicants to apply for the same protection in the UK within a period of nine months from the exit date, maintaining the date of filing (and, it is anticipated, priority) of the EU application. These proposals mirror the provisions set out in the Draft Agreement on the withdrawal of the UK from the EU (discussed here: IP & Brexit: the draft agreement on UK withdrawal).

It has been made clear that the filing of a new UK application for a trade mark or design, in the designated nine month period, will be at the usual cost and subject to the usual application processes in the UK.

In relation to trade marks and designs that have been protected or filed through the Madrid or Hague systems, the Government states its intention to work with, amongst others, WIPO to provide continued protection of existing registrations and find “practical solutions” for pending applications. Although this is another positive statement from the Government, the added complexity of working with WIPO, a non-EU body, could delay matters, particularly for pending applications. As such, it may be advisable to reconsider filing strategies when using these systems to cover the EU until the position becomes clearer.

The Government has confirmed that any unregistered Community design right arising before the exit date will continue to be valid for the remaining period of protection. In addition, the UK is proposing a “supplementary unregistered design right” which mirrors the features of the unregistered Community design; this is a welcome proposal as it should mean that design features including surface decoration (for example, 2D logos) can be protected under unregistered design law in the UK going forward.

There has been discussion that some UK practitioners may be unable to act before the EUIPO post-Brexit.