No Deal Brexit Government advice: trade marks & designs
The impact of a No Deal Brexit on trade marks and designs – UK Government advice released on 24 September 2018.
The UK Government has published draft legislation, The Trade Marks (Amendment etc) (EU Exit) Regulations 2018, which confirms the UK government guidance notes, published on 24 September 2018, on trade marks in the event of a no deal Brexit.
The draft legislation provides that an existing EU trade mark registration will be treated on and after exit day as if it had been filed and registered as a UK trade mark. The new registered trade mark will be referred to as a “comparable trade mark (EU)”, and will be created automatically and at no cost to the registered owner.
There is a provision to opt out if the EU trade mark owner does not wish to own a comparable trade mark (EU), however it is not possible to opt out if the mark has been put to use in the UK on or after exit day by the registered owner or with their consent; if the mark is subject to an assignment, licence, security interest or other agreement or document; or if there are pending proceedings based on the comparable trade mark (EU).
In relation to EU trade mark applications which are pending on exit day, applicants may file a new UK trade mark application within a period of nine months from exit day, maintaining the filing date, priority date or seniority date.
The draft Regulations do not make reference to international trade mark registrations or applications (trade marks protected or filed through the Madrid system).
In relation to registered Community designs, the UK Government has confirmed through proposed legislation that it will ensure that an equivalent enforceable registration will be provided for existing registrations which are fully published. The above proposed legislation will also apply to International (Hague) design registrations on the exit date, which designate the EU, and which are published and deemed accepted by the EUIPO. The creation of the equivalent design registration in the UK will be at minimal administrative burden. The registered owner will be informed that a UK right has been granted, but will have the option to opt out.
For Community designs which are pending at the time of the actual exit from the EU, or which are registered but not yet published (as a result of deferred publication), the Government has proposed legislation which will provide an option for the applicants to apply for the same protection in the UK within a period of nine months from the exit date, maintaining the date of filing (and, it is anticipated, priority) of the EU application. This proposed re-application process will also seemingly apply to International (Hague) design registrations on the exit date, which designate the EU, and which are either unpublished; still at the application stage; or which are not yet deemed accepted by the EUIPO.
It has been made clear that the filing of a new UK trade mark or design application, in the designated nine month period, will be at the usual cost and subject to the usual application processes in the UK.
In relation to trade marks that have been protected or filed through the Madrid system, the Government states its intention to work with, amongst others, WIPO to provide continued protection of existing registrations and find “practical solutions” for pending applications. Although this is another positive statement from the Government, the added complexity of working with WIPO, a non-EU body, could delay matters, particularly for pending applications. As such, it may be advisable to reconsider filing strategies when using the system to cover the EU until the position becomes clearer.
The Government has confirmed that any unregistered Community design right arising before the exit date will continue to be valid for the remaining period of protection. In addition, the UK is proposing a “supplementary unregistered design right” which mirrors the features of the unregistered Community design; this is a welcome proposal as it should mean that design features including surface decoration (for example, 2D logos) can be protected under unregistered design law in the UK going forward.
There has been discussion that some UK practitioners may be unable to act before the EUIPO post-Brexit. This will not affect D Young & Co, who will continue to be able to handle EU trade mark and design work before, during and after the Brexit process whatever the outcome of the Brexit negotiations.