Once the UK leaves the European Union, EU Trade Marks, Registered and Unregistered Community Designs and Community Plant Variety Rights will cease to have effect in the UK, and the Regulations under which they were granted and enforceable will no longer have effect in the UK. The UK Government is legislating for equivalent rights so that there should be no (or minimal) loss of rights for right holders. So far, the UK Government has laid before Parliament two draft Statutory Instruments dealing with such new rights, the Trade Marks (Amendment etc.) (EU Exit) Regulations 2018 (The Trade Mark Exit Regs) and the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations (The Design and IR Exit Regs). We are expecting similar draft regulations for plant variety rights and geographical indications.
The Government has confirmed that, in the event of a deal or ‘no deal’ Brexit, right holders with existing EU Trade Marks and registered Community Design rights will be protected on exit through the creation of new, equivalent UK rights granted at no cost and with minimal administrative burden (with an opt-out available for those who do not want to receive a new right of this kind). Use in the EU prior to Brexit will support the validity of these new rights.
Individuals or corporations with pending EU Trade Mark and registered Community Design applications when the UK exits the EU, will have 9 months to apply in the UK for equivalent UK protections. They will also be able to retain the initial EU application date as the priority date and any rights to seniority.
These new UK trade mark and registered design rights:
- will be renewable in the UK (separately from the EU rights from which they are derived)
- can form the basis for proceedings before the UK Courts and the UK Intellectual Property Office (UKIPO), and
- can be assigned and licensed independently from the corresponding EU right.
The UKIPO will take over the administration of the registrations which substitute in the UK for the former EU-wide rights.
Existing Unregistered Community Design Rights (UCDRs) will continue to be enforceable in the UK for the remaining period of their protection under the Design and IR Exit Regs. These designs will be known as “continuing unregistered Community Designs”. In addition, the Government has confirmed that it will create a new ‘supplementary unregistered design right’ in the UK, which will mirror the scope of the UCDR and arise automatically. This will mean that designs disclosed to the public after Brexit will be protected in the UK as supplementary unregistered design rights
Existing EUTMs, Community Plant Variety Rights, registered Community Designs and UCDRs arising from disclosure in the UK prior to Brexit, will remain valid in the remaining EU27 member states.
UK registrants of .eu domain names will no longer be able to own such rights post Brexit. They will either need to transfer their rights to an EU27 based registrant or buy an alternative top level domain.
What will happen to ongoing UK litigation and opposition proceedings concerning EU wide rights is still far from clear. While we would expect the new cloned UK rights to replace their EU parents where appropriate, there is little official guidance so far. The UK Government has stated that ‘provision will be made’ regarding litigation pending before the UK courts where the claim is based on an EUTM or Community design. We expect this will be the subject of future guidance from the Government once the future relationship becomes clearer.
Unless the UK Government manages to negotiate continuing rights of audience for UK professionals post Brexit as part of the future relationship, UK lawyers, and patent and trade mark attorneys, will lose their rights of audience before EU courts and bodies including the Court of Justice of the European Union (CJEU), the EU Intellectual Property Office (EUIPO formerly OHIM) and Community Plant Varieties Office unless they hold an alternative EU/EEA qualification. The current requirement that professional representatives are EEA nationals and have a place of business in the EEA (or are lawyers with a right to practise in the EEA in the case of the CJEU) means that the IP departments of UK companies, which have hitherto dealt directly with EU institutions, may need to restructure how they operate. They may need to relocate, replace staff or instruct external agents, in order to be represented before these bodies.
For more guidance from the UK Government on trade marks and designs if there is no Brexit deal, click here.