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Trade Marks and Brexit

Following formal notice by the UK Government under Article 50 of the Treaty to the European Commission to exit the European Union (EU), a 2 year deadline was created. The UK exit from the EU or so-called ‘Brexit’ is due to occur on 29 March 2019. In the absence of an extension or retraction of the Article 50 Notice the UK will cease to be part of the EU on 30 March 2019.

Whilst there is still much obfuscation as to whether the UK will leave without a negotiated exit (so-called ‘hard Brexit’) or whether the UK Government can secure Parliamentary approval for acceptance of the Withdrawal Agreement (so called ‘soft Brexit’) which will then need to be agreed by the European Parliament, the position with respect to what will happen to trade marks as of 30 March 2019 is known, in part, even if the finer details and administrative procedures are not.

The current draft withdrawal agreement which has been agreed in principle between the EU and UK still needs to be ratified. The trade mark provisions are non-contentious and so if the deal makes it through they will stand as drafted. A link to the withdrawal text can be found here.

Links to our earlier briefings concerning Brexit can be found here:

‘Soft Brexit’ (agreement reached between UK and EU)

Under the terms of the draft agreement, a transition term will be implemented up until 31 December 2020. All EUTM registrations maturing prior to this date will result in a clone registration in UK. That clone registration will be created with no administrative burden, no cost and no re-examination. The newly cloned UK registration will be vulnerable to non-use cancellation if, at the point of being cloned, it was also vulnerable to such action before the EUIPO. A new 5 year non-use term will not run from the date that the cloned registration is granted. The EU registration date will carry across to the UK cloned registration. Under the terms of the withdrawal agreement use in any one member state of the EU (other than UK) would be sufficient to validate the UK registration during the 5 year period immediately prior to the cloned UK registration i.e. use in Germany. By contrast, evidence of use from after the date of the cloned UK registration only helps if it is evidence of use in the UK i.e. post-clone use in Germany will not help. The owner of the newly created UK registration is not 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 as of this date of the need to file a priority application in UK. It will of course become a necessity to dual file in both UK and EU providing clients maintain an interest in both jurisdictions at this time and we will continue to have the ability to do this via the Paris Operation which J A Kemp set up in February 2018 (J A Kemp SNC). Clients should also now file dual applications before 29 March 2019 as it will not be possible to secure an EUTM registration by this date to avoid the need to separately seek an application in UK in the event that a soft Brexit is not secured.

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

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

‘Hard Brexit’ (no agreement reached between UK and EU)

The position with respect to a hard Brexit where no deal is reached by 29 March 2019 is slightly more fuzzy but the UK government has already committed by virtue of various Technical Notices to the creation of a clone UK registration “with minimal administrative burden”. Thus all commentators would expect a near identical re-registration process in UK. There may, however, be a requirement for a UK address for service. There is a commitment to provide a priority term of 9 months to pending EU applications as of EU exit day.  Again, we will notify clients with pending EU applications of any relevant deadline to priority file in UK in the event of a hard Brexit.

A link to the relevant  UK Government Technical Notice can be found here.

Naturally, we will let you know by way of a further briefing as soon as we receive any clarity regarding the UK’s exit from the EU.

At the time of writing we offer a 50% reduction on our UK service charge for filing when a corresponding UK case is parallel filed with an EU application or where you or your client already own an existing EU application/registration regardless of whom is shown as attorney/address for service.

Please contact your usual J A Kemp advisor should you have any questions.

27 February 2019

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