Most of the owners of existing European Union Trade Marks are concerned about the future of their rights after so-called Brexit. However, no one exactly knows if the UK will at 100% leave the European Union, or when the day will come. Probably, the deadline is the 31st of October 2019 (see more here). Also, some of the owners of trade marks don’t know really what they have to do if they want to file an application for a European Union Trade Mark to achieve protection in all Member States, including also the UK.
IPO UK – general remarks
The Intellectual Property Office in the UK published guidance in the field of Brexit and IP. It was updated on the 2nd of April this year. Despite the fact that the above-mentioned document is only a guidance, not a UK Statutory Document, we can read there that:
As outlined in the technical notice on trade marks and EU exit published on 24 September 2018, for all registered European Union Trade Marks (EUTMs) the IPO will create comparable UK trade marks, which will be recorded on the UK register. These comparable UK rights will retain the filing dates recorded against the corresponding EUTM and will also inherit any priority and/or seniority dates. They will be fully independent UK trade marks which can be challenged, assigned, licensed or renewed, separately from the original EUTM.
After exit, business, organisations and individuals with EU trade mark and Community design applications which are ongoing at the date of exit will be able to refile with the Intellectual Property Office under the same terms for a UK equivalent right, using the normal application process for registered trade marks and registered designs in the UK.
(see the section about Trade marks)
There is no certain clarity what will happen with the rights to trade marks if there’s no Brexit deal. Maybe some things can change before the exit day. You can read more about that in the guidance of the Department for Business, Energy & Industrial Strategy. The document was last updated on 17 January 2019. Also, more information can be found in the guidance of the Department for Business Innovation & Skills and Intellectual Property Office, updated on 21 March 2019.
What EUIPO says about Brexit?
Also, additional information has been posted on the website of the European Union Intellectual Property Office. The Office amended on 12 April 2019 a guidance called „EUIPO General Additional Guidance for Right Holders and Representatives”.
This document explains the most important consequences of the Communication No 2/2019 of the Executive Director of the Office of 22 February 2019 as amended on 12 April 2019 on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice if the Office.
In this document, EUIPO answers some of the major questions which should be answered to the owners of European Union Trade Marks.
In the field of the scope of protection EUIPO in its guidance (page 1, point I) clarified that:
As from withdrawal day, EU trade marks will, in principle(*), no longer be protected in the UK as a matter of EU law (Art. 1(2) EU Trade Mark Regulation). The UK’s withdrawal from the EU will thus limit the EU trade marks’ territorial scope of protection to the territory of the remaining 27 EU Member States.
(*) Continuity of protection in the UK of EU trade marks registered (or applied for) before the withdrawal day depends therefore exclusively upon the conditions established by the law of the UK.
What comes next
As the owner of a European Union Trade Mark, you have to follow the latest news about Brexit and the final future of your exclusive rights to your trade mark. UK agreed The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (2019 No. 269 from 13th February 2019). You have to know that this act comes into force in accordance with regulation 1 on the exit day. In the near future, we will write more about the rules of trade marks & Brexit which will be important for you. If you need more information about protecting trade marks please contact us.