Potential Impact of Brexit on European Union trademarks and Community designs

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 Potential Impact of Brexit on European Union trademarks and Community designs

  • In June 2016, the UK voted to leave the European Union (EU) and the date that is currently set for this to take place is 29th March 2019. Up until 29th March 2019 all EU registered trademark and community design rights will continue to provide rights holders with protection in all 28 member states of the EU.

Please note that European patents are granted under a different jurisdiction to the EU and are therefore unaffected.

After the UK’s departure from the EU, EU registered trade mark and community design rights will ultimately cease to provide the rights holders with protection in the UK.  However, the UK Government has indicated that it will ensure any existing rights will continue to be protected and to be enforceable in the UK by providing an equivalent right in the UK, in the event that the UK exits the EU with no deal.

At present no deal has been agreed for the UK’s departure from the EU, and indeed there is even the possibility that the UK will not depart.  This has created some doubt as to the protection afforded to the EU registered trademarks and community designs and unregistered community designs with respect of the UK after Brexit.

  • EU Registered Trademarks and Community Designs

The current indications are that:

  • Rights holders with existing EU trade marks or registered community designs will have a new UK equivalent right afforded to them that will come into force at the point of the UK’s exit from the EU. The trademark or design will then be treated as if it had been applied for and registered under UK Law.

  • Those with pending EU trademark and/or community design applications will be able to refile with the UK Intellectual Property Office for an equivalent UK right using the usual application process for registered trade marks and registered designs in the UK. This process will be available for a period of nine months after the UK exits from the EU.

  • Furthermore, any existing registered EU trademarks or registered community designs will continue to be valid in the remaining 27 EU member states.

  • Unregistered community designs

Unregistered community design right provides 3 years of protection from the date that the design is first made available to the public within the EU.  After the UK’s exit from the EU, the Government has indicated that it will ensure that all unregistered community designs which exist at the point that the UK leaves the EU will continue to be protected and enforceable in the UK for the remaining period of protection of that right.  This is entirely separate from the UK’s own unregistered design right, which protects the shape and configuration of an article at least for 10 years from the end of the calendar year in which it was first made publicly available.

  • Time scale possibilities
  • It is possible that the UK will leave the EU with some negotiated deal in place, in which case we would expect there to be some negotiated transition period in which the rights will be converted into equivalent UK rights. There is also the possibility that the date for the UK to leave the EU will be put back, in which case all of these rights will continue to have the same effect as they currently do until the date at which the UK does eventually leave the EU.

  • A second scenario is that the UK leaves the EU on the 29th March 2019 with no deal in place, in which case the nine-month transition period referred to in point 2.2 above will apply for pending registered trademark and community design applications. For registered trademark and community designs, a new equivalent UK right will be generated from or soon after this date as referred to in point 2.1 above.

  • A final scenario is that the UK ultimately remains in the EU, in which case the above provisions will no longer be required and EU trademark and community designs will remain in their current form.

  • Our Continuing Service to You after Brexit

In order for Bailey Walsh & Co LLP to be best placed to meet our clients’ needs after the UK’s departure from the EU, we are establishing a new sister office in Ireland, which remains part of the EU.  This will enable Bailey Walsh & Co LLP to continue to act before the EUIPO directly and apply for EU registered trademarks and community designs on behalf of our clients.

If you have any questions regarding this or any other IP issues, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2089962.

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