It won’t be news to you that there is still a great deal of uncertainty around Brexit and, with the March 29, 2019 looming, we do not yet know if the UK will exit in an orderly fashion (with a deal and with a transition period), obtain an extension of the negotiating period with a view to agreeing terms, crash out without a deal or, reverse the process altogether. With negotiations set to continue down to the wire, it makes sense to prepare now for the worst case scenario – a no-deal Brexit.
Notwithstanding the above, IP rights owners can take some comfort from the fact that the withdrawal terms relating to trademarks and designs are unlikely to change and so there is already a good deal of certainty as to what will happen, even if the timetable is unclear, depending on whether there is a transition period or not.
Access our “Ten things to know” about Brexit and its implications for IP as well as things to do in preparation.
In short, registered EU rights will cease to have effect in the UK after the withdrawal date. This date will either be March 29, 2019 (non-deal scenario) or December 31, 2020 (deal scenario).
Following the withdrawal date, points to note include:
- for EU trademarks and designs plus International registrations designating the EU which are registered at the withdrawal date, new UK national rights will be cloned onto the UK register, automatically, without charge and retaining all relevant dates;
- for pending EU trademarks and designs plus International registrations designating the EU which are pending at the withdrawal date, owners will have a window for refiling in the UK, paying the relevant fees, if the key dates are to be maintained;
- a new UK Supplementary Unregistered Design Right to augment current UK design right protection to mirror the protection currently available for Unregistered Community Design;
- the agreed position on exhaustion of rights is that rights conferred by an intellectual property right which were exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted both in the EU and in the UK. In the event of no-deal the UK has confirmed it will continue to recognize exhaustion of rights in the UK and the remaining EU countries; and
- proceedings which are ongoing before the EU IPO at the withdrawal date will continue through to completion with no change of representation required.
If you would like further information, or have questions, please contact:
Of Counsel and Chartered Trademark Attorney
Tel +44 20 7444 2235