The UK is leaving the EU. A Brexit deal has been agreed in principle with the European Union. However, the UK and the EU must both approve and sign the withdrawal agreement by 31 January 2020, or at the end of a transition period.
What happens with existing EUTM registrations or applications if the UK leaves the EU without an exit deal or transition period? This article is about the trademarks, but it mostly applies to Community designs as well.
Despite Brexit, the existing UK national trademarks will remain in force as they are now. Of course, in case of Brexit, the UK would have power to amend their current UK legislation and the UK judges would no longer be bound by the EU case law. On the other hand, the UK will remain member of other international agreements relating to IP issues, such as the Paris Convention and the Madrid Protocol for international trademark registrations.
As concerns the EU trademarks registered with the EUIPO, there are still many open questions to be answered. However, even in the absence of a deal, the UK government will ensure that EUTMs are protected and enforceable in the UK by providing an equivalent trademark registered in the UK with minimal administrative burden. The UKIPO will convert all existing EUTMs to UK trademarks free of charge and the converted trademark will come into force at the point of the UK’s exit. The new UK trademark will be subject to renewal in the UK and can form basis for proceedings before UK courts. The UK trademark can also be independently assigned and licensed.
As concerns EUTM applications pending at the time of exit, the applicant will be able to refile with the UKIPO under the same terms for a UK trademark, using the normal application process for trademarks in the UK. The application will enjoy the filing date and the priority period of the filing date of the original EUTM application. The deadline for such new UK application will be 9 months following the UK’s departure.
Much remain still uncertain when it comes to Brexit and the protection of EUTM rights in the UK after Brexit, but one thing is clear: EUTM holders need to be at least alert and awake. For the EUTM registration holders the situation is somewhat easy and cost-effective, but according to the UK government, the applicants with pending applications for an EU trademark will not be notified and after exit they will need to consider whether they refile with the UKIPO to obtain protection in the UK.
Thus, EUTMs holders should already at this point start to form their IP strategy for continued protection of their rights in the UK. And of course, any EUTM holders that do not want to continue protection in the UK, may always opt-out of this possibility to get or refile the new UK trademark. The best strategy also depends on how much risk the rights holder is willing to bear as opposed to the costs incurred. In case the UK is a core area to the business, it would be advisable to already file any new applications in the UK either nationally to UKIPO or in case of more international business, by designating the UK as one of the countries to the International registration.
Berggren will continue following any developments in the UK and we will keep monitoring our client’s rights and pending EUTM applications business as usual and inform the EUTM rights holders in good time about any changes in their trademark protection.