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AC Tischendorf Rechtsanwälte
March 5, 2020

Brexit: What effect will Brexit have on protection for your trademarks and registered designs?

What is the legal position?

The United Kingdom left the EU on 1 February 2020. Hence the EU-wide protection for EU trademarks and registered community designs will no longer apply in future to the United Kingdom. In order to avoid a gap in protection and provide for a controlled adaptation process the Withdrawal Agreement between the EU and the United Kingdom allows for a transition period in various areas up to 31 December 2020. This transition period also applies to all EU trademarks and registered community designs. However, once this transition period has come to an end the protection afforded to these rights in the United Kingdom will permanently lapse.

 

What are the key issues?

If you should wish to continue to use your trademarks or designs in the United Kingdom you will have to safeguard them as national proprietary rights. The Withdrawal Agreement provides various ways of facilitating this:

  • Proprietors of registered EU trademarks or registered community designs will hold comparable proprietary rights in the United Kingdom at no extra cost and without further analysis up to the end of the transition period. The British Intellectual Property Office (UKIPO) has made it clear that registered EU trademarks or international registrations (WIPO) with EU designations will automatically be converted to British national rights and previous registration data transferred. This means that the priority and seniority dates of EU rights will also be maintained. Existing registered designs will be automatically cloned and existing registrations transformed into so-called “re-registered UK designs”.
  • If you should not want this to happen it will be possible to file an objection.

All proceedings before the European Union Intellectual Property Office (EUIPO) concerning grounds for refusal with regard to the sovereign territory of the United Kingdom, older rights with their origin in the United Kingdom or parties or representatives having their base in the United Kingdom will continue unchanged right up to the end of the transition period on 31 December 2020.

For EU trademark applications or applications for international registrations with EU designations which are ongoing on the date of Brexit there will be a period of nine months in which to apply for a national British trademark and claim the same seniority as under EU trademark law. However, you yourself will have to proactively lodge such an application as the trademark proprietor. There will be no automatic transfer by the UKIPO.


What should you do?

If you are planning to get a trademark or design protected throughout Europe in the future you should, where required, file a parallel application in the United Kingdom. In the case of registration proceedings already instituted you will have to lodge a separate application claiming the same seniority as under EU trademark law. If, on the other hand, you do not need any protection in the United Kingdom you can object to the transfer of existing proprietary rights under the Withdrawal Agreement (opting-out) and hence reduce your costs and administrative expenditure.

If you should have concluded agreements and licences relating to intellectual property – whether as licensor or licensee – you should (as necessary) adjust these with regard to territory and licensed rights and/or extend them to encompass the new rights.


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