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Everything you
need to know about Brexit and how it affects your IP

Trade Marks

It is not certain that the UK will leave the EU, nor is it clear on what basis it will leave, if and when it does. There may be an exit without any terms having been negotiated and agreed between the UK and the EU (a so-called ‘no-deal Brexit’) or the UK Government may secure a withdrawal agreement with the EU which is then ratified by the UK and EU parliaments.

However, the position with respect to what will happen to EU Trade Marks as of ‘exit day’ (whenever that may be) is known in part, even if the finer details and administrative procedures are not.

Scenario 1: Agreement Reached between UK and EU – The Position with Regard to Existing Registrations and Applications

The terms relating to Trade Marks of any revised withdrawal agreement reached between the UK Government and the EU are likely to be the same as those of the Draft Withdrawal Agreement, which was agreed between the previous UK Government and the EU but not ratified by the UK Parliament. Under the Draft Withdrawal Agreement, a transition term will be implemented up until 31 December 2020. All EU Trade Mark (EUTM) registrations maturing prior to this date will result in a comparable registration in the UK. That comparable registration will be created with no administrative burden, no cost and no re-examination.

The new comparable UK registration will be vulnerable to cancellation for non-use if, at the point of being created, it was also vulnerable to such action before the EUIPO. There will be no new 5 year non-use term starting from the date that the comparable registration is granted. The EU registration date will carry across to the UK comparable registration.

Under the terms of the Draft Withdrawal Agreement, use in any one member state of the EU other than the UK will be sufficient to validate the UK registration during the 5 year period immediately prior to the comparable UK registration. By contrast, evidence of use from after the date of the comparable UK registration will only help if it is evidence of use in the UK (not in a member state of the EU other than the UK). The owner of the newly created UK registration will not be required to provide a UK address for service until 3 years after the expiry of the transition term.

All pending EUTM applications as of the expiry of the transition term will be afforded a priority term of 9 months to file a UK application claiming the benefit of the EUTM filing/priority date. That application will be subject to the usual UK fee arrangement and will be examined. We will notify all of our clients with pending EUTMs on our records of the need to file a priority application in the UK.

In the event of Brexit with an agreement, all existing EUIPO matters can remain with UK representatives (even those who have not separately obtained continuing representation rights before the EUIPO).

A Government notice regarding proposed numbering of comparable UK registrations in the event of Brexit can be found here.

Scenario 2: ‘No-deal Brexit’ (No Agreement Reached between UK and EU) – The Position with Regard to Existing Registrations and Applications

In the event of a ‘no-deal Brexit’, the position is slightly less certain. However, the UK government has already committed in various Technical Notices to the creation of a comparable UK registration “with minimal administrative burden”. It is therefore expected the re-registration process in the UK will be virtually unchanged. There may, however, be a requirement for a UK address for service.

There is also a commitment to provide a priority term of 9 months to pending EU applications as of ‘exit day’. Again, we will notify clients with pending EU applications of any relevant deadline to priority file in the UK in the event of a no-deal Brexit.

The UK Parliament approved the Trade Marks (Amendment etc.) (EU Exit) Regulations, earlier in 2019. The Government has since published further guidance for businesses and consumers. It continues to engage with stakeholders on the impacts of exit and preparation for a ‘no deal’ scenario. A link to the relevant UK Government Technical Notice can be found here.

Practical Advice

It may not be possible to secure an EUTM registration before Brexit. Clients who wish to ensure that their trade mark will be protected in the UK in any scenario, including a ‘no-deal Brexit’, are therefore advised to file dual applications now.

We currently offer a 50% reduction in our service charge for filing in the UK when a corresponding UK case is parallel filed as an EU application or where you or your client already own an existing EU application or registration. This offer is not affected in any way by the attorney or address for service attached to the existing application or registration.

Future Applications and Registrations

After Brexit, it will of course become a necessity for clients who wish to have protection in both the UK and the EU to dual file in both jurisdictions. We will continue to have the ability both to file EUTMs at the EU IPO via J A Kemp France and to file UK trade mark applications at the UK IPO.

Please contact your usual J A Kemp adviser if you have any general queries or would like to assess specific implications for your business.

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