On 5^th December, the European Commission issued a notice, countersigned by the EUIPO, to right-holders of, and applicants for, EU trade marks (EUTMs) and Registered Community Designs (RCDs), looking at the potential scenario in which no agreement is reached between the UK and the remaining 27 EU Member States in the Brexit negotiations.

The notice states that, unless a ratified withdrawal agreement establishes another withdrawal date or the period is extended, on 30^th March 2019 the UK will become a “third country”, i.e. it will no longer be an EU Member State. Any EUTM or RCD rights granted by the EUIPO on or after the withdrawal date will only be valid in the 27 EU Member States and will no longer have effect in the UK.

It is expected that the UKIPO will recognise EUTMs and RCDs that were registered prior to the above cut-off date by granting protection on the UK Register. However, IPcopy recommends giving consideration to filing UK and EU trade marks and designs simultaneously, to ensure adequate protection.

EU Representation

In terms of EU representation, it is likely, unless agreement is reached to the contrary or the UK remains in the EEA, that UK representatives will be precluded from representing clients before the EUIPO unless they qualify through other means (e.g. nationality, qualification and place of business in other EU member states).

In this regard, to ensure continued representation before the EUIPO, in September 2016, Keltie took the step of opening an EU office in the city of Galway, Ireland, headed by Keltie Partner, Sean Cummings, who is qualified to act before the UKIPO, the Irish Patents Office and EUIPO. Keltie will continue to represent its clients’ interests in the EU, before the EUIPO, regardless of the outcome of Brexit negotiations.

UK Representation

Similarly, unless an agreement is reached to the contrary or the UK stays within the EEA, the holders of UK registrations derived from EUTMs or RCDs (assuming that is what will happen) will likely require a UK representative to manage those rights. Keltie’s London office will provide such a UK address for service for UK rights originating from converted EUTMs thereby enabling Keltie to continue to represent its clients’ interests before the UKIPO.

Certainty in Uncertainty

Although the Commission notice does little to remove Brexit related uncertainty, it does reinforce the importance of being prepared for any outcome. If you are a right-holder or an applicant of a EUTM or RCD, it would be sensible to consider obtaining a EUTM/RCD as well as a national UK registration for your most important trade marks and designs. Having a national UK registration not only mitigates against the uncertainty posed by Brexit, it also provides additional enforcement-related benefits.

However, for those unable to obtain both UK and EU registrations, it is hoped that EU right-holders will continue to enjoy protection in the UK through a new equivalent UK national right. Nevertheless, the implementation period and any additional costs in relation to this possibility are not yet known.

Whatever options are available, Keltie can provide some certainty in this uncertain period by guaranteeing that it will continue to meet clients’ needs by offering representation before both the UK and EU Intellectual Property Offices and keeping its clients informed of any developments.

If you have any questions or concerns regarding the effect of Brexit on your IP rights, please do not hesitate to contact Keltie.

Amelia Skelding 22 December 2017