The Effects of a Possible No-deal Brexit on EU Trademarks and Community Designs

The UK’s Brexit deal is still under negotiation. On 1 April, the UK parliament once again rejected a series of proposed alternatives to Brexit. As such, the UK is still seeking to further prolong the negotiation period with the EU, but the default position is that the UK will exit the EU on 12 April without a deal, unless any other alternative solution is presented to the EU by that time.

Both EU and UK authorities have agreed on how a ‘no-deal Brexit’ would affect EU trademarks and Community designs should the UK leave the EU without a deal. While waiting for further news, we discuss below the effects that a no-deal Brexit would have on right owners.

For right holders with existing registered EU trademarks (EUTM) and/or registered Community designs (RCD), new UK equivalent rights will automatically be created. Said equivalent rights will come into effect simultaneously with the UK’s exit, meaning that the respective trademarks and designs will then be treated as national UK rights in accordance with applicable UK legislation. These equivalent UK rights will be independent national rights that can be challenged, assigned, licensed, and renewed separately from the original EUTM or RCD.

With regard to trademarks, the equivalent UK rights will retain the filing dates of the corresponding EUTMs and will also inherit any priority and/or seniority dates. The registrations will automatically receive a new UK registration number consisting of the last eight digits of the respective EUTM and will be prefixed with UK009.

For registered designs, the new UK national right will retain the registration and application dates as well as any priority dates of the corresponding RCDs. The registration number allocated to the relevant design will consist of the full RCD number and will be prefixed with the digit ‘9’.

Any right holder who do not wish to receive a new UK equivalent registered trademark or registered design may opt out of the system on certain conditions.

EUTM applications and RCD applications still pending on the exit date may be refiled with the UK Intellectual Property Office for a UK equivalent right under existing national trademark and design right application proceedings. Filing dates and claims to earlier priority and UK seniority recorded for the corresponding EU application will be recognised, provided that an application is filed within a period of nine months from the exit. The application fees will correspond to present UK application fees.

We will contact all clients who have pending EUTM application(s) or RCD application(s) in order to discuss the possible initiation of national applications in the UK.

Unregistered Community design rights differ from the UK’s own unregistered design rights in both their scope and period of protection. The former provides three years of protection for a range of design features from the date that the design was first made available to the public (i.e. ‘disclosed’) within the EU, while the latter protects product shape and configuration for a maximum of fifteen years.

When the UK leaves the EU, existing unregistered Community design rights will continue to be protected and enforceable in the UK (in addition to the other EU member states) for the remainder of their period of protection.

Unregistered designs disclosed in the UK after the exit date will be protected in the UK by a newly created additional national right known as the supplementary design right. This supplementary design right mirrors the features of the unregistered Community design right and thus protects unregistered designs under terms that correspond to those of the Community Design Regulation. The name of the supplementary unregistered design right derives from the fact that it will function alongside the existing UK unregistered design, which will remain unchanged.

Unregistered Community designs made available to the public in any of the remaining EU countries after the exit date will receive protection in accordance with the Regulation in the remaining EU countries and will not be protected in the UK.

Borenius’ lawyers are available to assist in addressing any questions you may have regarding this legal alert. Please feel free to contact any of the Borenius’ attorneys listed in this alert or those with whom you usually work.