BREXIT, deal, no deal.. no BREXIT….. what does it mean for your Industrial Property Rights?

We are March 29, a little less than 3 years after the referendum of June 2016. The UK should have left, theoretically, the EU today, but it has become unclear whether they will leave and if so, under what conditions. As far as your Industrial Property Rights ( IPRs) are concerned, the way the UK will eventually leave, will not affect European Patents. However, for your Trademark and Design rights, the consequences are different in function of the scenario.

Scenario 1: No deal

If there is a “No Deal” Brexit, then as on the Brexit day ( 12 April 2019 ?) all existing Registered EU Trademarks and Registered Community Designs will be granted an equivalent or comparable trademark or design registration in the UK. Therefore, the rights you have in the UK through Registered EU Trademarks and Registered Community Designs will not be lost.

The process carried out by the UK IP Office (“UKIPO”) in order to protect the UK rights obtained through a Registered EU Trademark and Registered Community Design is referred to as “cloning”. The “cloning” is being carried out by the UKIPO at no cost.

EU Trademark Registrations will keep their current EU Trademark Registration number, but for the purpose of identifying their cloned version on the UKIPO Register the UKIPO will place the reference “UK009” in front of the original EU Trademark Registration number. A similar system is expected for Registered Community Designs.

The same process will be carried out for International Trademark Registrations and Design Registrations that have designated the EU via the Madrid Protocol. A protected UK right stemming from an EU Designation will be cloned into its own stand-alone UK Trademark Registration rather than a separate UK Designation.

The UKIPO will notify owners of Registered EU Trademarks that a new UK Trademark Registration has been granted. Any owner of a Registered EU Trademark who does not want a UK Trademark Registration will need to “ opt out”.

With regard to pending EU Trademark Applications and Design Applications, these will NOT automatically be cloned. Instead, there will be a nine-month period from “exit day” for the proprietor of a pending EU Application to file a new UK Application. Provided the UK Application is filed within that nine- month period then the UKIPO will recognise all filing dates and claims to earlier priority and UK seniority (where applicable for Trademarks) attached to the existing pending EU Application. The new UK Application will be subject to an official application fee.

Unregistered Community Designs which are in existence on Brexit day will continue to be protected and enforceable in the UK for the remainder of their duration.

Licences and security interests recorded at the European Intellectual Property Office ( EUIPO) , which affect the UK, will be deemed to continue to have effect in the IK, but will have to be separately recorded at the UKIPO against the cloned right.

As from Brexit day entities that are established only in the UK and natural persons who reside in the UK can no longer hold .eu domain names.

Scenario 2Deal

If a deal is reached, then the same procedures as referred to above will apply, but the “Withdrawal Agreement” will provide a transitional period which will expire on 31 December 2020 at the earliest.

So the difference with scenario 1 is a matter of having more time to transfer the EU rights into UK rights: During the transition period or on/by 31 December 2020 (yet to be clearly confirmed), the cloning of existing EU and International Trademark and Design Registrations will take place.

There will be a nine- month period from 31 December 2020 (to be confirmed) for the proprietor of a pending EU Trademark or Design Application or Designation to file a new UK Application. Provided the Application is filed within that nine- month period then the UKIPO will recognise all filing dates and claims to earlier priority attached to the existing pending EU Trademark Application or Designation. The new UK Trademark Application will be subject to an official application fee.

Do you have questions about Brexit and your Trademark and Design portfolio? Please get in touch with us ( ip@kirkpatrick.eu or your trusted Kirkpatrick contact). No matter what happens in politics, we will make sure you can be confident that your important IP is protected.