Brexit, the term for the UK’s exit from the EU, is currently scheduled for 31 October, 2019 after being delayed twice. Brexit may take place as scheduled or may be delayed again. If Brexit does take place, it may be under the terms of the current Withdrawal Agreement, but the UK may also leave the EU without an agreement or deal with the EU.
Under the Withdrawal Agreement, the UK will continue to protect all existing registered European Union Trade Marks, Registered Community Designs, and Unregistered Community Designs as it leaves the EU.
A no-deal Brexit would be different and may impact the protection of trademarks and designs. At this point, there are no immediate actions to be taken regarding intellectual property. However, the British government has published a guidance document for the event of a no-deal departure, to help rights holders protect their intellectual property as seamlessly as possible.
Current IP protection in the UK
Today, intellectual property rights and brand protection in the UK and all EU member states are granted and governed by the EU Intellectual Property Office. This way right holders are protected across all EU members through a centralized system. Alternatively, applicants may file a single trade mark application through WIPO, World Intellectual Property Organization, for protection through the Madrid and Hague systems that include the EU as well as many other territories around the world.
IP under no-deal Brexit
Following Brexit, the UK will no longer constitute an EU member state. As a result, EU intellectual property protection will not extend to brands in the UK.
According to the guidance document, the UK “will ensure that the property rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK”.
This means that right holders will have a newly created UK equivalent right that will come into existence at the moment the UK exists the EU. This new UK intellectual property “will be treated as if it had been applied for and registered under UK law”. Therefore, once registered under the UK equivalent right, everything that was done at the EU prior to the departure of the UK will now be done in the UK, such as rights renewals and legal protection in UK courts of law and the Intellectual Property Office’s Tribunal. Unfortunately for rights holders, they will need to pay the UK’s national renewal fee to maintain their rights in the UK.
Applicants with a pending application for an EU trademark, pending EU Designation of an International Registration, or a registered Community design that has not achieved registration by the date that the UK leaves the EU, will have the right to refile for the UK equivalent right, in accordance with the UK application process, and after incurring the UK application fees.
In some cases, the question of earlier filing may rise. Therefore, for 9 months after the exit, UK applications will retain the same priority and filing dates as pending EU applications. The same process will apply to international registrations designating the EU filed with WIPO through the Madrid and Hague Systems.
This is designed to ensure the uninterrupted, continued protection for the above trademarks and registered designs in the UK.
Important no-deal points
It’s important to note that in a no-deal scenario, rights holders that will take no steps to ensure their IP rights in the UK will still retain all existing registered EU trademarks or registered Community designs rights in the remaining EU member states.
As for the IP rights in the UK, rights holders may choose to opt for the new equivalent right or otherwise opt out.
As for pending applications in the EU, potential rights owners may refile to gain protection in the UK or not, but the decision and responsibility lies with them, and they will not be contacted in this regard.
As for new applications, they may be filed in the UK and/or EU. UK applicants will continue to be able to apply for EU protection as they do now.
Some issues, such as the status of ongoing legal disputes involving EU intellectual property rights, will be addressed later on, when the UK exits.
Not all rights are registered. Community design, an industrial design right in the EU, also has an unregistered form protected across EU member states. These design rights protect different design features, such as shape and surface decoration. The Unregistered Community design right does not have an equivalent UK right. This right is valid in the EU for 3 years, and in the case of a no-deal exit, it will have the same scope in the UK for the remaining period of protection with no action required by the rights holders. The UK will also create a new equivalent right in the UK, therefore offering the same protection to unregistered Community design as offered by the EU.
IP protection strategy
Businesses, organizations and all rights holders should continue to monitor the situation closely as exit day approaches.
We at Wiser Market believe it is important to effectively prepare and know how to protect your intellectual property online and offline after Brexit.
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