How will Brexit affect UK/EU registered intellectual property rights?
22 March 2019 by Andreea Brindas
Do you have registered UK or EU intellectual property and are unsure how your rights may be affect by Brexit? This blog will provide you with a brief overview of the potential issues that may arise in relation to UK or EU registered trademarks.
Brexit will not impact on intellectual property rights that subsist or are registered as UK rights, nor will it affect the application of UK rights to international agreements, for example, the Agreement on Trade-Related Aspects of Intellectual Property Rights. However, if you hold a registered European Union Trade Mark (‘EUTM’) without holding a UK registered right in parallel, you may be at risk of losing your right, subject to whether there will be a ‘deal’ or ‘no-deal’ Brexit.
On a general note, if the UK leaves the EU in a ‘deal’ scenario, this means that the EU legislation will continue to apply to the UK during the transition period (Starting on 29 March 2019 and ending on 31 December 2020), enabling the UK to participate in the customs union and single market during this period. On the other hand, in a ‘no deal’ scenario, once the UK has left the EU, the EU legislation will no longer be applicable to the UK and the UK will decide whether to mirror any post-exit developments in EU law in domestic law.
‘Deal’ Brexit (as per the Withdrawal Agreement****):
- If you hold a EUTM that is registered before the end of the transition period you will become holder of a comparable trade mark rights in the UK. This means that you will not be required to make a separate registration application in the UK.
- If you have already made an application for a EUTM and such application is still pending at the end of the transition period, you will be allowed a further 9 month grace period during which you can file a UK application to register the same mark. You will be able to take advantage of the same filing, priority and seniority dates.
- If your EUTM is declared invalid or revoked after the transition period has ended but proceedings have been started before the end of the transition period, the comparable right will also be cancelled as of the same date, except where the grounds for invalidity or revocation are not applicable in the UK.
- Your comparable UK trade mark right will have the benefit of any reputation acquired by the corresponding EUTM by the end of the transition period.
- If you hold a EUTM, this right will continue to be valid in the remaining 27 EU Member States after the exit day, but it will no longer have effect in the UK and all seniority claims of earlier UK marks of your registered EUTM will cease have effect in the EU.
- If you are a person domiciled in the UK or a business having a seat solely in the UK, you will no longer have rights of audience in proceedings before the European Union Intellectual Property Office (‘EUIPO’).
However, the Government published its Technical Notice on Trade Marks and Design which aims to provide an equivalent UK right from the exit day for registered EUTMs to ensure that the intellectual property right is protected and enforceable in the UK. This will be similar to the ‘deal’ Brexit scenario.
Moreover, the Trade Marks (Amendments etc.)(EU Exit) Regulations 2019 were also made in February 2019 which will come into force on the exit day. The purpose of these regulations is to ensure that EUTMs registered before exit day confer the same rights in the UK as UK registered marks.
The government legislated to protect the holder of a EUTM, who does not also hold an equivalent UK-registered right to avoid the risk of such holder having no enforceable intellectual property right in the UK from exit day. In the circumstances, the Government also avoided the risk that trademarks would be exposed to the risk of third parties filing for identical or similar rights during the transition period that could take priority over any subsequent attempts of their own to register in the UK. However, such risks are still to be considered in a ‘no-deal’ Brexit.
The Corporate Commercial Department here at Fisher Jones Greenwood LLP can certainly assist you with any questions you may have regarding UK and EU trade marks, applications to register such rights or pursue a claim for breach of such right. Should you require any further information or assistance please do not hesitate to get in touch – call 01206 700113 or email [email protected]
****The Withdrawal Agreement was agreed between negotiators, but rejected by the House of Commons at the ‘meaningful vote’ on 16 January 2019.
Disclaimer: all information above is correct as of the 22nd March 2019 and may change depending on how the Brexit negotiations develop.
Blog by Andreea Brindas
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