European Union: Brexit Update - Trade Marks And Designs

Following the UK Parliament's recent rejection of the Prime Minister's draft Withdrawal Agreement, the uncertainty over Brexit continues.  With the clock ticking down to 29th March and no sign of an alternative agreement being accepted by all parties, businesses must plan for all possible outcomes, including "no deal".

Fortunately for owners of EU intellectual property rights, the UK Government has already issued guidance on what will happen to those rights in the event the UK and EU fail to reach an agreement.  We reported on that guidance last year – see here, and the situation remains largely unchanged.

The Government is committed to ensuring that registered EU trade marks and registered Community designs will continue to be protected in the UK by providing equivalent UK rights.  International (Madrid Protocol/Hague Agreement) registrations which designate the EU will also continue to be protected via the granting of equivalent UK domestic trade marks or designs (note that there is currently no indication that the International registrations will themselves be extended to the UK).  

The owner of an EU trade mark or Community design application which is pending at the date of the UK's exit from the EU will have a period of nine months from that date to file an application for a UK equivalent right which retains the filing date of the corresponding EU application.

We continue to await guidance from the Government regarding legal disputes in the UK involving EU trade marks and registered Community designs.  As regards opposition and invalidity proceedings which are pending before the EU Intellectual Property Office when the UK leaves the EU, and which are based solely on UK rights, the EUIPO has previously intimated that, in the event of "no deal", such proceedings will be rejected as groundless.  

We are monitoring the situation and will report developments as they occur.

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.