With the original Brexit deadline of 29 March 2019 upon us, British Prime Minister Theresa May has secured a little more time from EU leaders. However, it still remains unclear whether a deal can be reached and whether the UK will depart the EU on 12 April or 22 May 2019.
Although this uncertainty will have some impact on some practical aspects of any transition, IP owners should not be unduly concerned, and should make sure that they review their portfolios now so that they are prepared and may adjust their strategies accordingly.
On 1 March 2019, the UKIPO already published their guidelines on post-Brexit trade marks rights in anticipation of a “no deal” Brexit. Registered EU Trade Marks and Designs
The UK government will adopt measures to ensure that all existing registered EU trade marks (EUTMs) and registered Community designs (RCDs) will continue to be protected and enforceable in the UK.
- Upon departure, equivalent cloned UK rights will be granted to existing registered EUTM and RCD owners, and these rights will be subject to future renewals in the UK.
- No official fee or documentation will be required to effect the cloning.
- Right owners will able to rely on these equivalent UK rights before the UK Courts and the UKIPO’s Tribunal.
Further, the equivalent UK rights can be assigned and licensed independently from the EU right. However, recorded licences or security interests against a EUTM will not be automatically recorded against the cloned UKTM. Such transactions must be recorded against the corresponding UKTM within 12 months from Brexit.
IPR owners are also reminded to review their IP agreements (e.g. licensing agreements, distributorship agreements, etc.), where the jurisdictional coverage includes the EU; appropriate amendments may be required depending on whether the parties intend to cover the UK after Brexit.
However, the position regarding licences and security interests recorded against RCDs is unclear at this stage.
The UKIPO will notify right holders regarding their equivalent UK right granted to them by way of publication on its website. Renewals due on or after Brexit will need to be separately renewed in the UK.
Pending EU Trade Marks and Designs
As for owners of pending EUTMs and RCDs at the date of Brexit, they will have 9 months to re-file with the UKIPO using the same filing particulars recorded under the EU applications, including the filing dates and any priority claims. It is therefore important to keep an eye on this deadline. Re-filing costs under the UK fee structure will be payable.
The above also applies to international trade mark and design registrations, designating the EU, to ensure that continued protection is in place for IRs in the UK after Brexit.
Use and Reputation
The UKIPO has indicated that genuine use made of a EUTM made in the EU (whether inside or outside the UK) before Brexit day will count as use towards the equivalent UKTM.
The trade mark non-use period in both the EU and UK is 5 years. Therefore, any genuine use made anywhere in the EU before Brexit, will be considered use in respect of the cloned UK right. However, any post-Brexit use in the EU will not be taken into account towards the cloned UK right.
The above approach similarly applies to the establishment and assessment of reputation.
What to do now?
For the time being, EUTM and RCD owners should review their portfolio. In particular, the owners of any pending applications will need to identify these and keep up to date with any deadlines.
Any agreements in place that refer to the EU should be reviewed and consideration should be given to whether corresponding UK recordals of transactions (e.g. assignments, licences, security interests) are required. This is to ensure that persons with an interest in the transactions are protected as their rights may be subject to timely recordals in the UK.