Brexit: Deal or no deal, what does it mean for your EU registered trade marks and designs?

It is now expected that the UK will leave the EU on 31 October. What will this mean for your EU registered trade marks and designs?

1. If there is no deal?

If there is no deal on 31 October 2019 the expectation is that the Trade Mark Exit Regulations will come into force and all EU registered trade marks and designs will continue as cloned UK rights with the same dates as the existing EU right. Pending trade mark applications are more problematic where rights holders will have a nine-month period in which to file in the UK to enjoy the same rights as the EU mark.  A new law which is similar to EU unregistered design law will also be put into place protecting UK designs.

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 a new Withdrawal Agreement is passed?

If a new Withdrawal Agreement is passed, the Trade Mark Exit Regulations will come into force 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.

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) What about ongoing 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.

(c) any pending EU marks or designs 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 and design 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.