The UK Government has issued guidance on their proposals for EU trade marks and registered designs in a ‘no deal’ Brexit scenario. Of particular interest is how holders of such rights will be able to obtain continued protection within the UK.
Should a deal be struck on the terms of the UK’s withdrawal from the EU, then that deal should cover the position going forward for both UK and EU intellectual property rights. However, of pressing concern to many is what will happen if the UK leaves without a deal. The UK Government has published guidance addressing this point, and we summarise the position below for trade marks and registered designs.
The proposal is that all existing (at the time the UK leaves the EU) registered EU trade marks and designs will continue to be protected in the UK by way of an equivalent UK right being created. These new UK rights will be created with a minimal administrative burden and, although not expressly stated in the guidance, it is expected there will no, or very limited, additional costs.
In respect of any applications for EU trade marks or registered designs which are on-going at the point the UK leaves the EU, the proprietors of such applications will be entitled to refile for UK protection within 9 months of the date the UK leaves the EU. This will, however, be a ‘new’ application and as such be subject to the usual fees for a UK application. Provided an application is made within the 9-month post-exit period, the UK right will be treated as if it had been applied for on the date the EU application was made (which limits the risk that subsequently registered rights could be used to prevent registration of the new UK rights).
The position may, of course, be different if a deal is struck. However, to hopefully avoid having to pay both UK and EU fees for protection that is currently granted on the payment of just EU fees (and successful registration), it is advisable to file for any EU trade marks or designs as soon as possible. The earlier applications are made the more likely it is that those applications can be completed prior to the UK’s exit from the EU (which is currently scheduled to happen on 29 March 2019).
For further information or if you’re interested in applying for a trade mark or registered design please contact Stephen Ruse on 01604 258064 or by email to Stephen.Ruse@howespercival.com.
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