With ongoing discussion between the UK Government and the European Union about reaching a deal on Brexit, speculation continues about the possible consequences of a Brexit deal; when an agreement is finally reached!

Since Griffith Hack reported on the possible effects on trade marks and designs in October 2018, further options and outcomes have been discussed concerning the validity of EU Intellectual Property (IP) in the UK; post-Brexit.

There is little clarity as to how Brexit will unfold, with many updates and changes likely to occur over the coming days and weeks. Based on recommendations from UK and EU IP specialists however, there are some important considerations and steps required to ensure that IP rights remain valid and alive during this period of uncertainty.

Key Dates

After British MPs rejected Theresa May’s proposals on 15 January,13 March and 1 April 2019, the world waits on outcomes from the continuing debate.

The current transition period deadline will be 31 December 2020 if a withdrawal agreement is reached. Further, any ‘no deal’ provisions will not be enforced until after this date.

A. EXISTING RIGHTS

European Patent Rights

As previously advised, European Patent Rights will not be affected by Brexit, as the European Patent Convention is not an instrument of the European Union.

UK Trade Mark Rights

Any trade marks on the UK Register (national registrations in the UK as well as international registrations designating the UK) should remain unaffected by any Brexit deal (or no deal) in the UK. Post-Brexit, however, they will not be enforceable in the EU.

Even if the UK does not leave the EU, it will be important to obtain separate protection on the EU Register for corresponding UK trade mark registrations and applications. UK Trade Mark Rights will not automatically be enforceable or transferred into EU Trade Mark Rights. For example, it is best practice for EU oppositions, to ensure that there is an EU registration or application not just a UK registration or application. Also, if you have an EU opposition being handled by a UK-based attorney, it is important to ensure they can continue to act post-Brexit.

EU Trade Mark Registrations post Brexit

You do not need to take any action in relation to your EU trade mark registrations at this stage.

Since we reported in October 2018, the current position is that post-Brexit, the UK government will ensure owners of EU registrations will be able to “clone” their rights in the UK and receive a separate UK trade mark registration (at additional cost) should they wish to ensure protection in the UK. A cloned UK right will automatically come into force on the implementation date unless Owners opt out of this cloning. Therefore, if implementation occurs on 12 April 2019 for example, the cloned UK right will come into force at 11pm (UK time) on 12 April 2019.

Owners will need to opt out of receiving this cloned UK right. For example, opt-out might be selected if a trade mark owner already has an identical trade mark registration on the UK Register.

Evidence of Use for EU Trade Mark Registrations

Irrespective of Brexit, evidence of use of a trade mark in the UK will be deemed evidence of use in the EU for the five-year period prior to “exit day”. In other words, evidence of trade mark use in the UK post “exit day” will not be deemed use of the trade mark in the EU. However, this type of evidence (of use in the UK) will be deemed evidence of use for the “cloned” UK trade mark right. This is one reason why cloning rights in the UK may be important in the context of enforcing IP rights in the UK.

On the flip side, evidence of use in the EU in the five-year period prior to “exit day”, will be deemed valid evidence of use for the “cloned” UK trade mark right. This is relevant for purposes of defending cancellation proceedings based on non-use.

Important Recommendations for Renewing EU Trade Mark Registrations

Our UK associates recommend that any EU trade mark registrations with a renewal deadline in the 6-month period following Brexit, be renewed before Brexit occurs to avoid paying separate renewal fees in both the UK and the EU.

Registered Community Designs post Brexit

You do not need to take any action in relation to your Registered Community Designs at this stage.

Again, as set forth above in relation to EU trade marks, UK rights will be cloned from the EU rights.

Further, any Registered Community Designs that have a renewal deadline in the 6-month period following Brexit should be renewed before Brexit occurs to avoid paying separate renewal fees in both the UK and the EU.

B. PENDING APPLICATIONS

Pending EU Trade Mark Applications

Applicants with any pending EU trade mark applications on “exit day” will have a 9-month window to re-file in the UK and maintain the EU priority filing date. However, it is important to note that this will likely incur additional filing fees.

Despite the uncertainty, it is best to assume that any pending or new EU applications are unlikely to extend to the UK. A separate UK application will need to be filed if the trade mark is to be registered in the UK.

Therefore, if exit day occurs as early as 12 April 2019, we recommend ensuring a “plan” is finalised in relation to UK protection for EU applications prior to the end of December 2019.

Pending Applications for Registered Community Designs

Applicants with any pending Community Design applications on “exit day” will have a 9-month window to re-file in the UK and maintain the EU priority filing date. It is important to note that this will likely incur additional filing fees.

When a definitive Brexit date is announced, we will be able to confirm the advice outlined above.