At this stage of the negotiations the probability that a withdrawal agreement will be signed and that the consideration of the below referenced issues will be postponed until the end of 2020 is progressively decreasing.
The UK government prepares for every eventuality, including a “Hard Brexit” scenario, and offers guidance through the publication of a series of technical notes updating citizens and businesses about how to make informed arrangements for a no-deal exit.
In the event of a no-deal scenario the consequences for right holders would vary for registeredand merely applied-for rights at the date of Brexit.
According to the UK Intellectual Property Office (UKIPO), in the case of registered European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) at the date of Brexit (March, 29th 2019, unless postponed), these existing EU rights will come into force as new UK equivalent rights arising from the original EUTM/RCD and preserving all acquired rights (filing date, priority date, seniority date). This “conversion” into independent UK rights will require only a minor administrative burden for right holders. The UKIPO will notify right holders that a new UK right has been granted and will also give them the possibility to “opt out” (if they are not interested in receiving an equivalent UK right).
Thus, a continued protection of registered EUTMs and RCDs will be ensured in the UK after Brexit.
Pending EUTM/CD applications
In the case of EUTM/CDs for which the application is still pending at the time of Brexit, there will be no automatic right or application that will come into effect in the UK. The right holders would dispose of a nine-month period as from the date of Brexit to file a UK equivalent right under the same terms using the normal application process in the UK so as to maintain their already acquired rights (filing date, priority date, seniority date). There will be no formal notification from the UKIPO to right holders. The deadline of action will have to be proactively monitored by right holders or by their representatives.
Unregistered Community designs
As for unregistered Community designs that exist at the date of Brexit, these will continue to be protected and enforceable in the UK for the remaining period of protection of the right (period of protection of a total of three years starting from the date that the design is first made available to the public within the EU). No action is required from the right holder. Moreover, it is expected that a new unregistered design right in UK law, which will reflect the characteristics of the unregistered Community design, will come into force after Brexit.
International registrations for trademarks and designs designating the EU
There is still some uncertainty as to whether or not International registrations for trademarks and designs designating the EU will continue to be protected and enforceable in the UK and how this protection would be put into practice. Apparently, discussions on this matter are currently ongoing between the UK government and WIPO.
Finally, it is worth recalling that the Brexit will not imply any changes for European patents.
As it is at this stage impossible to predict which will be the final scenario, we strongly recommend that right holders with strategic business interests in the UK seek legal advice in view of taking precautionary measures in order to safeguard their rights and interests in the most effective way (for instance through the filing of separate UK titles as of now for strategic new trademark/design applications). We will keep our clients informed about further developments in this matter and remain naturally at your disposal for any complementary information you might require.