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Brexit: What does a no-deal scenario mean for your EU registered trade marks and designs?

View profile for Simon Bennett
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Parliament has voted but with less than two months to go until Article 50 is triggered it is still not clear whether a deal will be reached for the UK to leave the EU…

What does this mean for your EU registered trade marks and designs? 

1. If there is no deal?

If there is no deal on 29 March 2019 the expectation is that the Trade Mark Exit Regulations will come into force or similar and all EU registered trade marks and designs will continue as cloned UK rights with the same dates as the EU right. Pending trade mark applications are more problematic where rights holders will have a 9 month period in which to file in the UK to enjoy the same rights as the EU mark.

This follows UK Government guidance, here

2. If the exit is delayed?

If the exit is delayed all EU registered trade marks and designs will continue as before without any interruption in their coverage over the UK pending a further agreement or deal.

3. If the withdrawal agreement with amendments is passed?

If the Withdrawal Agreement is passed with amendments, the Trade Mark Exit Regulations will come into force or similar and all EU registered trade marks and designs will continue as cloned UK rights with the same dates as the EU right. More detail on what this means can be found in our previous comment. This option looks increasingly unlikely. 

4. What are the risks?

Whichever scenario occurs there remains a considerable degree of uncertainty not least because there is no guidance from the government or the EU on a number of areas including:

(a) co-existence and licence agreements that specify the EU as a territory. Will these be deemed to cover the UK?

(b) EU designations of International Registrations and designs are not dealt with in the Exit Regulations. It is assumed that the same cloning of the rights is the intention but this has not yet been made clear.

(c) What about UK trade mark infringement and design infringement proceedings that rely on EU rights? This has not been the covered in the guidance but we assume that since EU rights will be converted into UK rights for practical purposes these will be covered. 

(d) EU unregistered design rights that currently cover the EU will similarly not cover the UK after Brexit and it remains to be seen whether similar provisions will be implemented to cover the current rights.

(e) any pending EU marks on the leave date will not cover the UK when registered. A new UK application will need to be filed. 

Recommendations

Whilst the uncertainty remains, we recommend filing both UK and EU trade mark applications to protect your brand. Any EU trade mark applications that are filed now will almost certainly not cover the UK on the leave date.

If you need further guidance on any of these issues please contact Sarah Redmond and Simon Bennett.