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Brexit 2020 – Impact on Trade Marks and Designs

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brexit-1481028_640When will the UK leave the EU?

The Withdrawal Agreement has now been ratified by both the European and UK Parliaments. As a result, the UK will enter into a transition period on 31 January 2020, during which the UK will no longer be part of the EU, but will still be bound by EU rules and treated like a Member State. In this scenario ‘Exit Day’ for the purposes of IP rights will not be until the end of this transition period, expected to be on 31 December 2020.

What will happen to EU applications and registrations?

EU Registrations

It has been confirmed by the UK IPO that the creation of UK equivalent EU Trade Marks and Registered Community Designs will happen upon ‘Exit Day’. The Withdrawal Agreement provides that registered EU trade marks and Registered Community Designs will be cloned on to the UK Register and allocated a new registration number at no cost to the right holders. These cloned registrations will give trade mark owners the same rights as existing UK registrations and all existing dates of the EUTM registration, such as filing dates, priority dates and seniority dates, will be maintained.

EUTM designations of International Registrations will also be cloned on to the UK Register. However, these rights will be national UK rights and not UK designations of the International Registration.

The cloned UK registrations will then become independent of the EU Trade Mark registrations and Registered Community Designs from which they stem and will need to be renewed separately at the next renewal date.

EU Applications

Any EUTM applications, EUTM designations of International Registrations and Community Design applications still pending on ‘Exit Day’ will not automatically be granted any rights in the UK. However, owners of pending EUTM applications/designations and Community Design applications will have 9 months from the ‘Exit Day’ to file an equivalent UK application (which will attract standard official fees) and benefit from the same filing date (and priority date, if applicable) of the EUTM application/designation or Community Design application.

Will use in the EU be able to maintain the cloned trade mark in the UK (and vice versa)?

Use of a ‘cloned’ trade mark in the EU, but not including the UK, will be sufficient to maintain a newly ‘cloned’ UK right for a period of five years after ‘Exit Day’. After this date, the mark must be put to use in the UK in order to maintain registration.

The matter of whether use of an EU trade mark in the UK only will be sufficient to maintain an EU right is not so clear. The EUIPO have indicated that such use will be relevant for a period of time after ‘Exit Day’, but the significance of this may gradually reduce over time.

Will there be an opt-out for rights holders?

If rights holders wish to opt-out of having a UK equivalent right created, they will be able to do so. The UK IPO will advise on the process for doing this in due course.

Can Keltie still act as my representative before the EU IPO?

Brexit does not impact on Keltie’s ability to continue to represent clients in the EU due to our Irish office, which remains in the EU, meaning we continue to be able to act before the EU IPO.

Many things impacting IP rights will become clearer over the course of negotiations between the UK and EU, including the effects of Brexit on parallel imports and exhaustion of rights.

Should you have any questions regarding any of the issues surrounding Brexit and IP, please get in touch.

Amelia Skelding 30 January 2020

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