Time to review your trade mark and design protection in case of no-deal Brexit

With the ongoing uncertainties surrounding the Brexit negotiations, now is the time to start considering whether changes need to be made to your trade mark and design portfolios to ensure key IP rights will continue to be properly protected in the UK after it leaves the EU.

Following the 2016 referendum vote to leave the EU, there has been much discussion around the implications for European trade marks and designs. The UK Government and the European Commission have made an agreement in principle on how those rights should be dealt with once the UK has left the EU, but amidst growing concerns of a ‘no-deal Brexit’, businesses should start to consider preparing for that outcome, particularly for key intellectual property rights.

Those organisations which currently own EU trade marks, EU registered designs and EU unregistered design rights should consider what protection might be left in the UK should there be no agreement in place between the UK government and the EU Commission. EU trade marks (like EU registered designs) provide protection for all EU member states with a single registration. The proposal that has been agreed in principle includes the following key elements:

  • EU registered trade marks and designs will continue to have effect in the UK until the end of 2020;
  • For EU trade marks and designs registered before the end of 2020, a new UK trade mark/design registration giving the same protection in the UK would be created at the end of that period;
  • For EU trade mark/design applications filed but not registered before the end of 2020, the applicant will have until the end of September 2021 to file an equivalent UK application, benefitting from the same filing and priority dates applicable to the EU application; and
  • EU unregistered designs made available to the public before the end of 2020 would be granted ‘equivalent protection’ in the UK.

However, if there is a no-deal Brexit, there would be no transition period to the end of 2020 and it would be for the UK to implement, by the 29 March 2019 deadline, new legislation to recognise/convert EU rights, possibly without any mutual recognition from the EU. It is not certain whether or not this would happen by the deadline.

Businesses which currently rely for trade mark and/or design protection in the UK based on EU registrations only (having no national UK protection) should now therefore be considering filing for national UK protection for such marks/designs. Should there be a ‘cliff-edge’ Brexit with no withdrawal agreement in place, those without national rights in place in the UK may find themselves without the proper protection for their key IP rights.