In previous articles we have briefly discussed the possibility of how a “No Deal” Brexit will affect trade marks and designs. Since the UK is fast approaching the 29 March 2019 deadline for leaving the EU without a satisfactory deal in sight, we have highlighted the UK government’s plans for trade marks and designs in the event of “No Deal” in more detail.
In the event of No Deal, and assuming the Article 50 deadline is not extended, then 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 at 11pm on 29 March 2019.
These cloned marks 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 marks 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.
It has also been confirmed that all International trade mark and design registrations that currently designate the EU, and have 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.
Newly cloned UK national trade mark rights will be supported by use in the remaining 27 member states within a five year period after 29 March 2019. 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. Accordingly, if the new UK national right is not put to use in the UK after 29 March 2024, it will become vulnerable to non-use revocation.
What is not clear is whether use in the UK will continue to validate the existing EUTM for a period after 29 March 2019.
For EUTMs, RCDs and EU designations of International Registrations pending at 11pm on 29 March 2019, 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 will not notify applicants with pending EU applications that they need to consider re-filing in the UK and therefore we recommend that applicants take this time to consider their trade mark and design portfolios. Given the current political situation, we advise re-filing in the UK at the earliest possible opportunity to ensure that rights are adequately protected in case of a No Deal situation.
The UK IPO has also stated that it will allow for a period of nine months from the UK’s exit from the EU in 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.
This may have serious implications, as it is possible for a UK application to be filed nine months after EU exit day and claim a priority date six months prior to EU exit day, essentially giving a priority period of 15 months. Therefore, applications filed after EU exit day could be opposed by a later application that may not have been identified in any pre-searches or examination reports as it is possible for said later application to be filed after the filing date of the earlier application, but claim priority back to a date prior to EU exit day, Again, we strongly advise that new UK applications are filed as soon as possible before EU exit day in order to ensure that they are not adversely affected by this extended grace period.
With regard to ongoing legal disputes involving EUTMs or RCDs before the UK courts after 29 March 2019, the proposed Statutory Instruments indicate that there will be no change to the status of said proceedings. In terms of an injunction that is in force prior to EU exit day, subject to any order of the court to the contrary, the injunction will also continue to have effect in the UK.
It has been confirmed that all unregistered community designs existing at 29 March 2019, will automatically continue to be protected and enforceable in the UK for the remaining period of protection of the right. This applies regardless of whether there is a deal or not.
The UK government also intends to create an equivalent protection in the UK through new legislation. This new right will be known as the supplementary unregistered design right.
Whilst the cloning process will be at no cost to the right holder, new national UK trade marks and UK 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.
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.