‘Soft Brexit’ provides for creation of comparable UK trademarks and designs

In Insights

23 August, 2018
Soft Brexit provides for creation of comparable UK trademarks and designs

Owners of existing EU trademarks (EUTM) and designs (RCD) had been left somewhat in the dark about what will happen to their intellectual property rights on 29 March 2019, but The UK Intellectual Property Office is now shedding some light on the situation.

Existing EU trademarks and designs will, under the provision that the withdrawal agreement is ratified, i.e. that there is a ‘soft Brexit’, essentially be transformed into comparable UK rights and entered into the UKIPO register. This will be done automatically and free-of-charge.

This means that right holders of EUTM and RCD will hold not only one registration, but two, which will co-exist and cover the EU and UK. These will have the same filing and renewal dates. Right holders should therefore update all docketing and in-house registers with the information provided by the UKIPO with regards to renewal dates for the cloned registration.

The UK is also a member of the international trademark system, i.e. the Madrid System, and application for registration of TM can henceforth also be made through this system.

For businesses considering the UK to be an prioritised market, and to alleviate any possible issues arising after a “hard Brexit”, it is advisable to file for registration both in the EU and the UK as of September 2018.

However, during a period of nine months from 29 March 2019, pending applications for EUTMs and RCDs can be re-filed in the UK, keeping their EU filing dates. This will not, in contrast to existing and registered rights, be done automatically.

For RCDs, these are usually registered within two weeks of filing, and thus no additional filing in the UK appears to be necessary as things stand.

In case there is no deal between the UK and EU, i.e. a ‘hard Brexit’, the UKIPO has announced that their aim is to seek to minimise disruption for business and to provide for a smooth transition, but the conditions will have to be set out at a later time.

Regarding other intellectual property rights, the UK IPO offers further advise on their website.

With regards to patents, current validations of European patents in the UK will remain unaffected by the Brexit, and as set out by the UK IPO the UK thus intends to stay in the Unified Patent Court and unitary patent system after leaving the EU.

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