When is Brexit?
The date of Brexit has been set for 29 March 2019.
What is the “transition period”?
Under the terms of the draft withdrawal agreement a “transition period” has been agreed to allow for the smooth implementation of the terms of the UK’s withdrawal from the EU. The transition period will run until 31 December 2020, although there has been suggestion that this may be extended. The provisions concerning the transition period specify that, unless otherwise provided in the withdrawal agreement, EU law shall be applicable to, and in, the United Kingdom during the transition period.
What IP rights will be affected by Brexit?
EU trade marks and EU registered design rights will be affected. It is clear that when the UK has left the EU, and any transition period has expired, EU trade marks and EU registered designs will no longer be effective in the UK. For a trade mark or design to be recognised in the UK an application will need to be filed at the UK Intellectual Property Office (UKIPO).
Patents will not be affected by the UK’s departure from the EU. There are no EU level rights for patents at present. The European Patent Convention, which governs the granting of European patents, is not a piece of EU legislation and so no action is required in this sense.
There is a question mark around what will happen to the Unified Patents Court (UPC), which is a proposed single Court for the enforcement of European patents, if the UK leaves the EU. This is unclear, although the UK Government has ratified the Unified Patent Court agreement which intends to bring the proposed EU-wide Unitary Patent into force.
Will my trade mark rights cease to exist?
The biggest concern of most IP owners at present is what will happen to their EU registered trade marks and EU registered designs when the UK leaves the EU. The provisions are slightly different depending on whether the UK leaves the EU with or without an agreed Brexit deal. With the risk of the withdrawal agreement not being approved, the UK has been issuing a series of “technical notices” providing guidance on what might happen in the event of there being no Brexit deal. There is a notice giving guidance on what will happen to trade marks and designs if the UK leaves the EU without an agreed Brexit deal
What happens if Brexit is agreed?
The proposed withdrawal agreement contains provisions under which EU registered trade marks and EU registered designs will automatically be granted an equivalent UK national right. The UKIPO has not yet provided details of how the process will take place but the process should be automatic, without cost and with minimum administrative burden. The granting of equivalent UK national rights will apply to any EU right which has been registered/granted before the end of the transition period (31 December 2020), based on the current terms of the draft withdrawal agreement. There should be no re-examination of any equivalent UK national right created under these conversion provisions.
What happens if Brexit is not agreed?
The situation here is similar to if a Brexit agreement is reached but the timing is different. The “no deal proposals” indicate that registered or granted EU trade marks and designs will be granted an equivalent UK national right. The creation of an equivalent UK national right will apply to an EU right which has been registered/granted before the UK leaves the EU on 29 March 2019. There should be no re-examination of any equivalent UK national right which is created under these provisions.
What if I have a pending EUTM on the Brexit date?
Any EU trade mark application or Community design pending on the Brexit date will not be made the subject of equivalent UK rights automatically. However, as with the proposals under an agreed Brexit deal arrangement, applicants will have a nine months period from the date upon which the UK leaves the EU to apply for an equivalent right in the UK and for those rights to be backdated and retain the EU filing/priority date. Any UK application filed to replicate a pending EU application will be subject to payment of the normal UK application fees.
Will Brexit affect my International Registration?
The position concerning International registrations for trade marks and designs which designate the EU is not entirely clear. The draft withdrawal agreement indicates that the UK shall take measures to ensure that such International registrations designating the EU continue to enjoy protection in the UK. It is not clear how the UK plans to implement this and we understand that the UK Government is in discussions with WIPO concerning the matter. The position is the same either with an agreed Brexit deal or without an agreed Brexit deal.
Will I need to appoint an EU based attorney after Brexit?
No, Forresters will still be able to represent you. Not all UK firms will be able to continue their representation before the EUIPO but Forresters already has measures in place whereby we will continue to represent our clients seamlessly before the EUIPO going forward.
What can I do to reduce the risk?
In light of these concerns, we are advising clients to consider their position now and look at the possibility of filing UK national rights rather than waiting to see if the withdrawal agreement is approved or if fully detailed no-deal provisions are put in place. In relation to trade marks, we are also advising that clients (and associates) look at their (and their clients’) existing portfolio of EU registrations and consider filing UK national trade mark applications for those marks which are of importance to them in respect of the UK. While the additional UK filings for “doubling up” on existing EU applications and registrations may be seen as superfluous, this strategy of filing UK applications now will remove any uncertainty.
We are offering heavily discounted fees for UK national applications which mirror EU applications and existing EU registrations.
Please ask your usual contact for details.