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*Breaking News* - Major Brexit Update

FOR TRADE MARK OWNERS in the european community

Over two years ago, a majority of British voters supported the United Kingdom (UK) leaving the European Union (EU). That day of Brexit, Friday 29 March 2019, is now almost upon us. 

How will BREXIT impact your European Community trademarks?

On 24 September 2018, the UK Government released guidance on its position should the UK leave the EU without coming to any agreement (a “no deal” scenario):

  1. All registered EU trade marks and designs in force as at 29 March 2019 will receive the protection of new, equivalent UK trade mark and design registrations at “minimal administrative burden”;

  2. Pending EU trade mark and design applications at the time of Brexit will have nine months from 29 March 2019 to apply for the same protections in the UK.

Negotiations are still underway regarding the status of new EU trade mark and design applications filed through the Madrid and Hague Systems, and of ongoing legal disputes in the UK involving EU trade marks and designs.

Who needs to act now?

  • Anyone considering filing an EU trade mark or design application; and

  • Owners of any EU trade mark or design applications that are currently pending.

Registered EU Trade Marks (EUTMs) as at 29 March 2019

  • Registered EUTMs will receive a new UK trade mark right, at no or minimal cost, that will be subject to renewal in the UK, can form the basis for proceedings before the UK tribunal and courts, and can be assigned and licensed independently from the EU right;  

  • EUTM owners will be notified when their new UK trade mark right has been granted.  Owners not wanting to receive this right can opt out; and

  • Registered EUTMs will still be valid in the remaining EU member states.

Pending EU Trade Marks (EUTMs) as at 29 March 2019

  • Pending EUTM applications have nine months from Brexit (i.e. until 29 December 2019) to apply for UK registration through the UK’s “normal application process”; 

  • The EU filing date is retained for priority purposes.  The application will be granted upon the same terms as the new UK equivalent right for registered EUTMs; and

  • EUTM applicants with pending EU design and trade mark applications will not be notified when their applications no longer receive protection in the UK.

What should I do?

  • File duplicate UK and EUTM applications.  As Brexit draws nearer, this is especially relevant for EUTM applications that are likely to encounter distinctiveness objections or oppositions (i.e. likely to be pending as at Brexit); and 

  • Aggressively advance any EUTM applications that are currently pending to get them granted by 29 March 2019.  Any delay could mean that these applications are still pending upon Brexit and will incur costs to convert them into UK registrations.

How Can We Help? 

Contact us now if you want to ensure that your intellectual property remains protected across the EU and UK.

  

This article intends to outline some of the trade mark issues that you may need to address with your legal counsel when protecting your trade mark in the EU and UK.  It does not go into great depth with the subject matter, but offers useful insights into the basics.  It is not legal advice and it is not exhaustive of all laws and issues that may apply to your particular business.  Qualified legal counsel should review the details of your trade mark protection in the EU and UK .