Brexit – What this could mean for businesses and their IP rights

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 Brexit – What this could mean for businesses and their IP rights.

The UK is set to leave the European Union as of the 31 st October 2019. There is still, however, some degree of uncertainty as to the nature of the UK’s departure: whether we will leave with a negotiated deal; or whether we will depart with no deal in place, and what this could mean for businesses and their IP rights.

Provisions in the event of a “no-deal” Brexit

Trade Marks and Designs – Representation before the EU IPO

If the UK departs from the EU with no Brexit deal in place, UK attorneys will cease to be representatives before the EU IPO in respect of EU Trade Marks and Designs. However, in order to mitigate this issue, Bailey Walsh & Co. LLP have set up a sister company – Bailey Walsh Europe Ltd – within the EU, in Dublin, Ireland. Consequently, we will still be able torepresent our clients in all matters before the EU IPO, as Bailey Walsh Europe Ltd. This process will be seamless and will have no impact on our clients’ existing or pending rights, or on any other on-going proceedings before the EU IPO.

Protection of Registered Trade Marks and Designs in the UK

Existing EU registered trade marks and designs will continue to be valid within the EU and therefore will be unaffected in terms of the protection afforded in the remaining 27 EU member states.

In the leading judgement Lord Justice Kitchin, The Court of Appeal upheld the High Court’s findings on Stretchline’s construction of the Patent and that H&M’s products fell within the claims of that Patent and that H&M was therefore in breach of the settlement agreement.

After the UK’s departure from the EU, the EU registration will cease to have effect in the UK. However, the UK IPO has confirmed that these existing registrations will continue to be protected and be enforceable in the UK via the provision of an equivalent trade mark or design registered in the UK. The new right will come into force at the point of the UK’s departure from the EU and will subsequently be treated as if it had been applied for and registered under UK law. Importantly, this means they will also be subject to renewal in the UK, in addition to the EU registration being renewable at the EU IPO.

As yet, there has been no guidance on the administrative steps that will be required to set up these new registrations, but as soon as we are made aware, we shall be in touch with the requirements and the costs involved. The UKIPO have however indicated that any costs for recording the new rights are likely to be minimal.

Any EU registered trade mark and design applications which are still pending at the date of departure from the EU will continue ultimately to be registered and enforceable in respect of the remaining 27 member states of the EU. However, if protection is to be sought for the UK, the Applicant will have to refile the application directly with the UK IPO, and that the application will go through the usual application process in the UK.

The UK IPO has set a 9 month period from the date of departure from the EU in which they will recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. Applicants will, however, need to meet the cost of refiling the application in the UK.

Protection of unregistered Community designs

The UK IPO has confirmed that all unregistered Community designs which exist at the date of departure from the EU will continue to be protected and enforceable in the UK for the remaining period of protection that is available.

In addition, the UK IPO will create a new right to mirror the unregistered Community design, which will be known as the supplementary unregistered design right.

Protection of patents

European patents and applications are subject to examination and grant by the European Patent Organisation (EPO), and governed by the European Patent Convention (EPC). These are entirely separate from the EU and, as such, the European patent system will be unaffected by Brexit, and UK-based patent attorneys will continue to be able to represent their clients before the EPO.

Provisions in the event of a negotiated Brexit deal

In the event, the UK government negotiates a deal for the UK’s departure from the EU, there will most likely be a transition period put in place (indications are that it would be until at least December 2020), wherein existing and pending rights will still cover both the UK and the remainder of the EU.

If such a deal occurs, we will assess the provisions with respect to IP rights and let you know in due course.

If you have any questions or would like further information regarding any of the above, please do not hesitate to contact one of our advisers, either by email at or by telephone on +44 (0)113 243 3824.

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