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No Deal Brexit, Boris and IP

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brexit-1481028_640Following Boris Johnson becoming the Prime Minister of the UK last month, and given his desire to leave the EU by the 31 October 2019 deadline with or without a deal, we have highlighted the UK government’s plans for trade marks, designs and patents in the event of a “No Deal” Brexit in more detail.

It is noted that in the event of a “No Deal” Brexit, the UK will leave the EU without any transition period and the “switch-over” date for IP, referred to as “Exit Day” below, will be 31 October 2019 (unless there are further extensions)

Registered EU Trade Marks and Designs

On exit day, all registered European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will be cloned on to the UK Register at no cost to the right holders.

These cloned rights will be given the same rights as existing UK trade mark and design registrations and all existing dates, such as filing dates, will be maintained. The UK IPO will subsequently notify right holders of the cloned rights once the process has been completed.

If a right holder of an existing EUTM and/or RCD does not wish to obtain a new national UK right, it will be possible to opt-out of the abovementioned process.

After Exit Day it will be necessary to obtain separate UK and EU Trade Marks/registered designs in order to get protection across the territory that is currently covered by a single EUTM/RCD.

International Registrations – EU designations

It has also been confirmed that all International trade mark and design registrations that currently designate the EU, and have been registered in the EU, will be cloned on to the UK Register. These will, however, be cloned as standalone new national UK rights and not UK designations of the International Registration.

Trade Mark Use

Newly cloned UK national trade mark rights will be supported by use in the remaining 27 EU member states within a five year period after Exit Day. Therefore, if a mark is currently in use in Spain, but not the UK, it will continue to validate the new UK national right. However, this only applies for the first five years after EU Exit Day.

The EUIPO has confirmed that use in the UK prior to Exit Day will be relevant for a period of time after Exit Day but the significance of this use will gradually reduce over time. The period of time has not been defined as of yet.

Pending EU Trade Marks and Designs

For pending EUTMs, RCDs and EU designations of International Registrations, it will be necessary to re-file in the UK if protection in the UK is required. These applications will incur the usual costs set out in the UK IPO’s application fee structure.

The UK IPO has stated that it will allow for a period of nine months from Exit Day during which it will recognise all filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU design or trade mark application.

Agreements

If an agreement contains the term “EU”, then depending on how the agreement was drafted, this may no longer cover the UK and could be declared invalid after exit day. Therefore, we recommend reviewing any agreement that uses the term EU to ensure that it remains valid after exit day.

Unregistered Design Rights (UCDs)

It has been confirmed that all unregistered community designs (UCD) existing at Exit Day will automatically continue to be protected and enforceable in the UK for the remaining period of protection of the right.

Where a UCD comes into existence after Exit Day, the UCD will no longer cover the UK. There is a UK unregistered design right; however, there are some design aspects, such as colour and ornamentation, that would be covered by a UCD but not by the existing UK unregistered design right. The UK government will introduce a new UK unregistered design right called a ‘supplementary design right’ to cover these aspects.

Renewal

Whilst the cloning process will be at no cost to the right holder, new national UK trade mark and registered design rights will need renewing separately in the UK, in addition to the renewal of the existing EU right at the EUIPO.

With regard to International Registrations, as the EU designations will be cloned as standalone UK national rights, it will be necessary to subsequently renew such rights in the UK, rather than renewing under the International Registration process.

Patents

European patents are granted under the European Patent Convention (EPC). Brexit will have no impact on European patents because the EPC is not an EU treaty. Additionally, since membership of the EPC does not require a country to be an EU state, the UK will remain a member of the EPC post-Brexit.

The PCT system and UK national patents (either filed directly at the UK IPO or as regional patent applications from the EPC) are unaffected by Brexit.

European Patent Attorneys based in the UK will still be able to represent all applicants at the EPO after Exit Day.

Business as Usual

As a reminder, even in the case of “No Deal” and no extension, there will be no disruption in how Keltie represents its clients before the EUIPO. Due to Keltie’s office in the Republic of Ireland, which will remain an EU member state, we continue to be able to act before the EUIPO.


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