Brexit - EU IP Rights in a "No Deal“ Scenario

January 20, 2019

Alexander Spaeth, KLEINER Rechtsanwaelte, Germany

A lot of clients make use of European Trade Mark registrations (EUTM) and Community Design registrations (CDR) which both provide a European wide protection. It is clear that on the date of UK’s exit from the EU these IP rights will lose protection in the UK. Article 54 of the withdrawal agreement, that the EU and UK had negotiated, confirmed that owners of EU registrations will without any re-examination become the holder of a comparable registered and enforceable right in the UK. However, last week the British parliament has rejected the Brexit deal. A no deal scenario becomes more likely, even though Britain’s Prime Minister Theresa May has presented her “Plan B” today.

If there will be no Brexit deal the UK government has most recently confirmed that EUTMs and CDRs will nevertheless continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK. Right holders will have a new UK equivalent right granted that will come into force on the date of UK’s exit from the EU. The new UK right will be treated as if it had been applied for and registered under UK law which inter alia means that these rights will be subject to renewal in the UK and can be assigned and licensed independently from the EU right. Pending applications for EUTMs or CDRs will be able to refile with the UK IPO. For a period of nine months from exit, filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application will be recognized by the UK IPO. Same provision will apply to international registrations under the Madrid and the Hague System. The UK Government has not provided detailed information on all these processes.

With regard to unregistered designs the government has confirmed to 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 the right.

At least at present, there is generally no need to take additional steps with regard to UK filing strategies for trademark and designs. But we are advising clients to monitor further developments to secure continued protection of EU registrations in the UK after Brexit.