The tension around the Brexit is more palpable than ever. Not surprising at all: the consequences can be enormous. Especially if you have a legal advice practice based in the United Kingdom, a lot will potentially change.
Like you, we have no choice but to wait and see exactly if, and if so, how the Brexit will be rolled out. This doesn’t mean that we have to wait; we can be proactive and consider the consequences of the some of the most obvious scenarios. In case of a hard Brexit, we listed the consequences below.
Property rights to all existing registered EU trademarks and Community designs will remain protected and can be maintained in the United Kingdom because an equivalent national UK trademark or design will automatically be registered t.
Point by Point
- existing registered EU trademarks or Community designs will remain valid in the remaining EU Member States;
- protection of existing registered EU trademarks or Community designs in the United Kingdom will be achieved through a new, similar British right, granted with minimal administrative burden;
- rightholders will be informed that a new UK right has been granted. Any rightholder who does not wish to obtain a new equivalent UK trademark or design will be able to deregister. This means that the EU trademark or Community design in question will no longer be protected in the United Kingdom;
- a system will be provided for with respect to disputes pending before courts in the United Kingdom involving EU trademarks or registered Community designs;
- the UK Government is cooperating with WIPO to provide, from Brexit onwards, permanent protection in the United Kingdom of internationally registered trademarks and designs filed through WIPO and which have originally designated the European Union as the jurisdiction of protection, but wich to keep protection in the UK.
In the case of a pending application for a EU trademark or Community design, the applicant will have a term of nine months starting from the date of the Brexit to request the same protection in the United Kingdom, while keeping the date of the EU application for priority purposes.
Point by Point
- parties with pending applications for a EU trademark or Community design are not informed and must themselves decide whether they wish to apply for protection in the United Kingdom to UKIPO after the Brexit;
- parties with a pending application for a EU trademark or Community design may, on their own account, reapply for an equivalent UK right under the same conditions within nine months from the date of the Brexit, while keeping the EU application date for priority purposes;
After the Brexit, protection of trademarks and designs can only be obtained in the United Kingdom as a national right, and UK residents can still file EU trademarks and Community trademarks for protection in the remaining EU countries.
Point by Point
- new applications shall be eligible to be filed in the United Kingdom as national UK trademarks and designs at the usual cost;
- residents of the United Kingdom, as well as applicants from other non-EU Member States can as at present obtain protection in the EU on the basis of a EU trademark or Community design;
The rules differ slightly with regard to the protection of unregistered Community designs. For an overview, click here.
Representation in Pending Procedures or other questions
Are you involved in EUIPO or EU court proceedings and/or do you have pending applications of a EU trademark or Community design for clients established in the United Kingdom? Then you may need an IP partner outside the United Kingdom immediately after a hard Brexit to continue to proper representation of your clients’ interests.
There will be plenty of changes in the business operations for your clients deserving attention. It is good if together we can ensure that the transition - in any case intellectual property rights - can be made as simple as technically possible. We are happy to help you directly, pragmatically and proactively, so that you can offer your clients the level of quality they are used to.
Interested? Please contact Gaya Schultz, European Trademark and Design Attorney, or Alfred Meijboom, Partner Intellectual Property. We will be happy to help you!
