What could happen to UK Trade Marks and UK Registered Designs upon Brexit or no Brexit?

This post addresses what will happen if the UK exits the EU with no withdrawal agreement / transition provisions in place. Under current UK law this will occur on 29th March 2019 (the exit date), unless an extension of time to try to reach an alternative outcome is agreed. At the time of writing it is not known whether such an extension is available.

If the UK leaves the EU with no withdrawal agreement / transition provisions in place, the provisions put into place by the UK government for continued protection for EU trade mark and Community design registrations and applications will come into force in the UK on the exit date.

If those provisions come into force then registered EU trade marks and Community registered designs will be cloned by the UK Intellectual Property Office (UKIPO) and equivalent UK trade mark and UK registered design rights generated. Those UK equivalent rights will effectively be UK national trade mark and design registrations.

The cloning will be automatic but it may be some months before the UKIPO notifies the holders of EU trade mark registrations that the cloning has taken place and tells them of the registration number allocated to the UK equivalent right. That registration number, will, for trade marks, be UK009 [+ the last 8 digits of the EU trade mark registration number], e.g. for the EU trade mark registration number 012345678 the UK equivalent right will be UK00912345678. It is not yet known what the UK equivalent registered design number format will be.

When the cloning takes place, the UKIPO is proposing to record the person / company recorded as representative for the EU trade mark / Community registered design as the address for service / representative for the UK equivalent right. If we are currently looking after an EU Trade Mark / Community Design then we will be recorded as address for service for the UK equivalent rights.

We believe that it will minimise risk to the owners of UK equivalent rights that they ensure that those rights are in the care of a UK attorneys such as Swindell & Pearson. We are of this view because this will ensure that the representatives for those rights are aware of all developments in UK trade mark and design law and practice as they occur. Such developments may well diverge from EU law and practice.

Swindell & Pearson would be very pleased to take those UK equivalent rights into our care. We will make no charge for doing so.

To take UK equivalent rights into our care we would enter ourselves as agent and address for service at the UKIPO. All that we need to do this are your instructions. We do not need a power of attorney.

If you wish us to take UK equivalent rights into our care then we would ask that when you send us instructions, those instructions are accompanied by an Excel spreadsheet containing at least the following details about the EU registrations for which we are to take the UK part into our care:

• the registration number;
• the trade mark / design title;
• the proprietor;
• the application date (preferably in DD/MM/YYYY format);
• the next renewal date (preferably in DD/MM/YYYY format); and
• your reference.

We are requesting an Excel spreadsheet with the above data, sorted by next renewal date with the earliest renewal date first, so that we can ensure that we prioritise processing of those UK equivalent rights with the earliest next renewal dates.

We note that if we receive instructions to take UK equivalent rights into our care before the UK leaves the EU then we will regard those instructions as being dependent upon a UK exit from the EU on 29th March 2019 or within three months of that date. If the UK exits after 29th June 2019 then we will seek to confirm your instructions closer to the actual exit date.

The UK equivalent rights will have the same effective priority, filing and renewal dates as the EU trade mark and Community design registrations from which they are cloned.

We note that for all EU trade mark and Community design registrations that have a renewal due date after the date the UK leaves the EU, the UK equivalent right will need to be renewed on the next renewal date or any later date that the UKIPO may set. This requirement for renewal will not be affected by the due date for renewal of the EU trade mark and Community design registration on the exit date. In other words, renewal of the EU trade mark and Community design registration before the exit date will not avoid the need to renew the UK equivalent right.

It is possible, in some circumstances, for an EU trade mark / Community design owner to request not to receive a UK equivalent right, so called “opting out”. If you wish not to receive UK equivalent rights please contact us so that we can determine whether opting out is possible in the circumstances associated with the particular EU trade mark / Community design in question.

With regard to EU trade mark applications and Community registered design applications that are pending on the day the UK leaves the EU (the exit date) there will be no automatic cloning of those applications.

For pending EU trade mark applications and Community registered design applications, if these are to be continued in the UK, UK equivalent rights can be applied for within 9 months of the exit date. Those UK equivalent applications will have the same priority, filing and seniority dates as the equivalent EU trade mark and Community registered design applications. The application for the UK equivalent rights will be treated in the same fashion as a UK national application and involve the same official fees. To file such applications all we need are your instructions to do so. We do not need any power of attorney.

If we can offer any assistance in connection with IP in the UK at this time or in the future, please do not hesitate to contact your usual contact at Swindell & Pearson or Antony Gallafent at [email protected].