The impact of a ‘no-deal’ Brexit on EU trade marks and designs

Posted: 12/11/2018

The UK Government is preparing key industries for the prospect of the UK leaving the EU with no deal, a scenario which remains a real possibility. This briefing note summarises the Government’s guidance on EU trade marks and designs and exhaustion of rights. Other notices have been issued on copyright and patents.

Continuing protection for existing EU registered trade marks

• At the exit date, existing registered EUTMs will continue to have effect in the EU and will also automatically convert into a new UK equivalent right with immediate effect.
• The new UK equivalent right will be granted with ‘minimal administrative burden’ and without examination by the UK IPO.
• Proprietors will be notified that a new UK right has been granted and there will be an option to ‘opt out’ if proprietors do not wish to be granted a new UK equivalent right.
• The use provisions for the new UK equivalent right are to be confirmed.

Re-filing required for pending EU trade mark applications

• Proprietors of pending EUTM applications will have nine months from the exit date in which to re-file a national UK application claiming the priority date from the existing EUTM application.
• Proprietors of pending EUTM applications will not be notified of the need to re-file for protection in the UK and procedures should be put in place to ensure applications are re-filed within the nine month period.
• Proprietors will have to meet the costs of the re-filed UK application.

Continuing protection for Community registered designs

• Existing Community registered designs will continue to have effect in the EU and will also automatically convert into a new UK equivalent right with immediate effect in accordance with the above procedure for existing registered EU trade marks. 

Re-filing required for pending registered Community design applications

• Proprietors of pending RCD applications will have nine months from the exit date in which to re-file a national UK application claiming the priority date from the existing RCD application in accordance with the above procedure for pending EU trade mark applications.

Community unregistered design rights

• All existing unregistered Community designs will continue to be protected and enforceable in the UK post-Brexit for the remaining term of protection (three years from the date the design was made available).
• For all designs disclosed in the UK after Brexit, the UK will create a new ‘supplemental’ UK unregistered design right, equivalent to the unregistered Community design, which mirrors the unregistered Community design. 

Ongoing disputes

• Provisions regarding the status of pending legal disputes involving EU trade marks and designs are to be confirmed.

Exhaustion of rights

• As a temporary measure, the Government says that the UK will continue to recognise the EEA exhaustion of rights scheme for an (undefined) period post-Brexit. During this period, parallel imports of goods from the EEA can continue.

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