The Effect of Brexit on your IP
Introduction
Whilst the situation regarding Brexit remains unclear, we now have some guidance on what will happen to European trade mark and registered design registrations and applications, in the form of the Draft Statutory Instruments entitled The Trade Marks (Amendment etc.) (EU Exit) Regulations 2018 and The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019. Whilst these Regulations are still only in draft form, it is not likely they will change substantively.
Whilst the Draft Regulations are rather detailed, here is an overview of the situation should Brexit occur.
What’s in a date?
Whether the UK leaves the European Union with or without a deal, the effect is the same, but the timing is different. With no deal, the changes will take effect at 11pm on 29th March 2019. With a deal, the changes will take effect at the end of the transition period, which is currently expected to be 31 December 2020, but could change.
Whilst the date is a movable feast, the effect on your trademarks and designs is the same. However, the effect is different for registered trademarks and pending applications. I will therefore deal with each of these separately below.
Registered EU Trademarks
EU trademarks applications and International trademarks applications designating the EU that have granted by the effective date discussed above, will be automatically cloned by the UKIPO. Essentially, a corresponding UK registration will automatically be generated on the UK Register, which will have all the same details as the existing European registration. No action will be required by applicants to generate these clone registrations, although they will be subject to separate renewal fees at the appropriate time.
Pending EU trademark applications
If an EU trademark application or International trademark application designating the EU is not registered before the effective date discussed above, then the applicant will have 9 months to apply for a corresponding new UK application. The UK application will need to have the same details as the existing European or International EU application, but will be treated as having been filed on the same day as the existing EU or IREU application.
The forms and fees for such applications are not yet available, but it would be reasonable to expect the fees to be similar to the current UK filing fees.
Registered Community Designs
Community design applications and International design applications designating the EU that have granted and published by the date of exit discussed above, will be cloned by the UKIPO. Again, a corresponding UK registration will be generated on the UK Register, which will have all the same details as the existing Community or International EU registration. These clone registrations will be automatically generated and will be entered on the UK design Register as soon as reasonably practicable on or after exit day. Subject to certain exclusion, proprietors who do not wish to receive a new UK Community design registration, will be able at any time on or after Exit day to opt out.
Pending EU design applications
If a Community design application or International design application designating the EU is not registered before the effective date discussed above or the application has been allowed but publication has been deferred, then the applicant will have 9 months to apply for a corresponding new UK application. The UK application will need to correspond with the existing Community or International application, but otherwise will be treated as having been filed on the same day as the existing Community or International EU application.
The forms and fees for such applications are not yet available, but it would be reasonable to expect the fees to be similar to the current UK filing fees.
Unregistered Community Designs
UK under the current terms of the Community design Regulation, for the remaining period of the right, and will be referred to as “continuing unregistered Community design”. In addition, whilst UK law already provides for unregistered design right protection, where there are gaps in coverage, the UK expects to create a new unregistered design right in UK law which mirrors the characteristics of the unregistered Community design, so that design rights generated after Brexit will continue to be protected in the UK at least under the current terms of the unregistered Community design.
Patents
The European Patent Convention is not legislation of the European Union. Thus, there will be no change to European patents and application filed under the European Patent Convention.
The Community Patent Regulation, when it comes into force, will be based in European Legislation. Some change is expected to be required to the legislation before the Regulation comes into force in order to allow the UK to remain a member of the Regulation. Progress of this Regulation is stalled presently, pending the outcome of a legal intervention in Germany.
Conclusion
In short, if all of your EU or International EU trade marks and Community or International EU designs are registered, or expect to be before 29th March 2019, then no action is required. If you have pending EU or International EU trademark or designs applications, or wish to file a new EU or International EU trademark or design applications, you will need to consider what effect these changes will have on the application process.
We have directly contacted all of our clients with currently pending EU or International EU trademark or design applications to outline the specific effect on their applications.
Of course, if Brexit does not happen, the current situation will be unchanged. If Brexit is delayed, I would expect the situation regarding trademarks and registered designs to remain as set out above, but the effective dates will change.
We will keep you updated as the situation changes. In the meantime, if you have any questions, please do not hesitate to contact us.