No-deal effects for trade marks and designs

rom an EU perspective, the consequences of a no-deal Brexit for EU intellectual property rights are simple.

EU registered trade marks and designs (including those made pursuant to international arrangements) will no longer be valid and enforceable for the UK and claims therefore of UK priority and seniority will fall away.

Pending applications for EU registered rights will cover only the 27 remaining Member States.

On the other hand, the UK Government is committed to the continuance of protection for intellectual property rights.

In a technical paper issued on 24^th September 2018 the UK Government laid out its plans for achieving this in the event of a no-deal Brexit as follows:

1)         An equivalent UK registered trade mark or registered design will automatically be given by the UKIPO to holders of EU registered trade marks and registered designs which:

(a) will need to be renewed in the UK;

(b) can form the basis for proceedings before the UK courts and the UKIPO; and

(c) can be sold or licensed independently of the EU registered right.

2)         Those with pending applications in the EUIPO on 29^th March 2019 will within 9 months be able to refile for trade mark or design registration in the UK maintaining the same filing date, claims to priority and UK seniority as recorded on the corresponding EU application.  This will not be automatic and the applicant will need to pay the normal UK application fee.

3)         The UK will also create a new UK unregistered design right which will mirror the EU unregistered design right and protect the appearance of product designs that are new and possessed of individual character for a period of 3 years.  This will run alongside the UK’s own unregistered design right scheme that protects functional product shapes and configurations and lasts for up to a maximum of 15 years.

If you would like more information on how these arrangements affect your business and its IPRs, please contact us at enquiries@humphreys.law.

Humphreys Law