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No-deal Brexit: UK government issues guidance on EU Trade Marks

11 October 2018

On 24 September 2018, the UK government released guidance on the impact of a no-deal Brexit on EU trade marks.

The guidance has not yet been enacted as legislation; and its sole aim is to clarify the UK’s intended actions should we encounter a no-deal Brexit, resulting in the UK leaving the European Union on 29 March 2019. The EU and UK continue their negotiations on whether a Brexit “deal” can be reached. If a deal is reached, the position is likely to change; and further direction will be required.

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EU Trade Mark Registrations – Continued Protection

There will be no loss of rights for owners of EU trade mark registrations because they will benefit from corresponding and equivalent registrations in the UK, as of 29 March 2019. Filing and priority dates of the new equivalent UK registration will correspond to the original EU trade mark registration.

There is no statement on whether a fee will be payable for this automatic transfer. However, there is a note that “no action” will be required by the EU registration holder, which suggests no fees will be payable.

EU registration owners will receive notification when a new UK registration has been granted.

It will be possible to opt out of the automatic transfer, should brand owners not wish to obtain equivalent protection in the UK. There is no confirmation about the way in which this will occur.

All of the above will occur with “minimal administrative burden”.

EU Trade Mark Applications – Action Required

Owners of pending EU trade mark applications, as of 29 March 2019, will be entitled to apply for equivalent UK trade mark protection. There will be a nine month window in which to do so, expiring at the end of December 2019. The UK application will retain the filing date of the EU trade mark application, as well as priority claims where applicable.

Applicants will be required to pay the UK’s official fees to obtain a corresponding UK trade mark application.

The UKIPO will not notify existing EU trade mark application owners of the possibility of obtaining a corresponding UK trade mark application.

For those with pending EU trade mark applications at the date of Brexit, it is important to contact a UK Attorney to ensure the positive action that is required to maintain rights in the UK is undertaken.

International Trade Marks (Madrid Protocol) – Further Guidance Needed

The UK government has not offered guidance on the impact of Brexit on EU designations of International Trade Marks protected under the Madrid Protocol. It has, however, noted its continuing work with the World Intellectual Property Organization to ensure equivalent protection in the UK for EU designations protected via the international trade mark system.

Impact

It must be stressed that the above is merely guidance and, at this stage, not the final outcome of the Brexit negotiations.

It is, however, reassuring to note the UK’s willingness to continue to acknowledge EU trade mark rights in the event of a no-deal Brexit. The guidance provides welcome clarity and certainty on this issue.

Withers & Rogers will be following the developments of the Brexit negotiations surrounding trade marks very closely and will update on them when they happen.

Mark Caddle
Trade Mark Group

If you require further information on anything covered in this briefing, please contact Mark Caddle (mcaddle@withersrogers.com; +44 207 940 3600) or your usual contact at the firm.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.