Brexit and Trade marks

With just over six months to go until Brexit, we finally have a clearer picture of how registered EU trade marks and designs will be enforced in the UK, and vice-versa, following the publication of the draft EU Withdrawal Agreement.

It is only a draft proposal at the moment, and remains subject to further negotiation between the UK and the EU, but it explains how each side foresees the post-Brexit future for trade marks and designs. Of course, this assumes that an Agreement is signed by the UK and the EU at all – there remains a possibility of a ‘no deal Brexit’ where there is no formal Agreement, and the resulting consequences of that outcome are unknown.

During a transition period between 29^th March 2019 and 31^st December 2020, the UK will continue to be part of the EU trade mark and design system, meaning that EU marks and designs will remain enforceable in the UK, and vice-versa.

With effect from 1^st January 2021, the draft Agreement proposes the following position in relation to EU trade marks and designs:

• The UK has committed to introduce a new law that will recognise all EU marks and designs registered on or before 31^st December 2020, such that they will be enforceable in the UK as though they were UK marks and designs. Essentially, the EU registration will be ‘copied’ onto the UK register. This is currently referred to as a ‘cloned right’. It is not clear whether any fee will be payable by the registered owner.
• The date of 31^st December 2020 will be important, because any EU marks and designs that have been applied for, but not registered, by that date will not be enforceable in the UK. The applicant will be given until 30^th September 2021 to file an identical application in the UK which, if successful, will result in the grant of a ‘cloned right’ – namely an identical UK registration that provides retrospective protection from the date of the original EU mark or design. We anticipate a fee will be payable, but the amount has not been confirmed.
• ‘Cloned’ UK marks and designs will be registered for the same period as the corresponding EU mark – therefore, if an EU mark is due to expire in May 2025, the ‘cloned’ UK mark will also expire in May 2025. However, both EU and ‘cloned’ UK marks can be renewed indefinitely and independently of the other.
• Unregistered EU designs that have been placed into the public domain on or before 31^st December 2020 will be afforded equivalent unregistered design status in the UK.

The draft Agreement also deals with other areas of trade mark and design procedures:

• Where revocation, cancellation or invalidity proceedings against an EU mark or design are ongoing on 31^st December 2020, and are eventually successful, any corresponding ‘cloned’ UK mark or design will also be revoked or cancelled, provided that the grounds on which the EU mark or design was revoked or cancelled amount to valid grounds for revocation or cancellation under UK law.
• A ‘cloned’ UK mark or design cannot be revoked or cancelled on the grounds that the corresponding EU mark or design was not used in the UK prior to 31^st December 2020.

The draft Agreement also offers comfort to owners of international trade marks and designs registered through the Madrid or Hague systems, as the UK has also committed to ensure that international trade marks designating the UK or EU will continue to benefit from the same level of protection in the UK.

Whilst we will continue to provide further advice as the position becomes clearer over the next six months, our current advice is as follows:

• Based on the draft Agreement, filing a separate UK application is not currently necessary when filing new trade mark and design applications in Europe, provided we are confident that the registration process will have completed on or before 31^st December 2020.
• However, the risk of a ‘no deal Brexit’ cannot be ignored completely, and the relatively low cost of a UK trade mark or design application should be borne in mind when considering whether to ‘hedge your bets’ and apply for a simultaneous UK registration.
• For those who have existing registered EU marks and designs, we advise doing nothing for the moment. We do not consider it necessary to file a separate UK application at this stage.

These notes have been prepared for the purpose of an article only. They should not be regarded as a substitute for taking legal advice.