With Brexit negotiations ever ongoing, uncertainty continues over the terms on which the UK will leave the EU.
Uncertainty continues over the terms on which the UK will leave the EU. Following the UK parliament's rejection of the draft Withdrawal Agreement between the UK and EU on 15 January 2019, the likelihood has arguably increased that the UK might exit the EU on 29 March without the two year transitional period that the Agreement envisages.
The position in relation to intellectual property is, fortunately, clearer. The UK government has this month published its proposed draft Statutory Instrument to regulate the transfer of rights connected with EU trade marks into the post- Brexit trade mark regime in the UK. This includes commitment on the following:
Continuity of registered rights. EUTMs which are registered prior to exit day will be cloned into UK trade mark registrations which will have the same filing, priority and registration dates. There will be no official fee.
EUTM applications and re-filing in the UK. EUTM applications which are pending on exit day will not be automatically cloned. The applicant may, within nine months, file a new UK application which will retain the same filing (and priority) date as the EUTM application.
Proving use of UK registrations cloned out of EUTMs. If exit day falls during the proof of use period, any use evidence relating to a time after exit day must show use in the UK. If the proof of use period ended before exit day, use anywhere in the EU will be acceptable.
Lapsed UK registrations for which seniority was claimed into EUTMs. Where seniority was claimed from a UK trade mark registration into an EUTM, the cloned UK registration which arises after exit day will continue with the same rights (and same earlier filing date) as if the original UK registration had never lapsed.
Continuity of rights. Under UK law, references to an EUTM in any document (such as a contract) made before exit day shall, unless there is evidence that the document is not intended to have effect in the UK, be read on and after exit day as including references to the cloned UK mark.
You can see the latest statement from the UKIPO here.
Our key recommendation
An EUTM application filed today will not be registered by end March. Until exit day in March, or agreement being reached confirming a transitional period (and later exit day), we recommend that clients dual file UK trade marks simultaneously with EU trade marks so as to obtain registered trade mark protection in the UK at the earliest opportunity.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.