Trade marks and designs in the event of a "no deal" Brexit

With less than five months to go before the UK leaves the European Union, the government has published a technical note to explain the effect of a “no deal” Brexit on EU registered trade marks and designs, and unregistered Community designs. The note is one of a series of notes published by the government to help businesses and individuals understand how to plan and prepare for a ‘no deal’ scenario. This article looks at what is likely to happen to trade marks and designs in the event that no deal between the UK and the EU is agreed.

Registered trade marks and designs

At present, applicants are able to apply to the EU Intellectual Property Office (EUIPO) to register trade marks and designs which, if granted protection by the EUIPO, will be protected throughout the EU, including in the UK. It is also possible to apply for protection in the EU (including the UK) through the international Madrid and Hague systems.

Separately, applicants seeking protection for their trade marks and designs in the UK alone have always been able to continue to apply to the UK Intellectual Property Office (UKIPO) for registered trade marks and designs which, if granted, will be protected in the UK alone.

Unregistered designs

Unregistered Community design right protects a range of design features in a product across the EU for a period of three years from the moment the design is first made available to the public in the EU. This is separate to the UK’s own design right, which gives protection to a right holder for 15 years, but for a more limited range of design features. Unregistered Community design right is an important right for a range of designers, as it protects various 2D and 3D aspects of designs such as surface decoration and product shape.

Existing EU registered trade marks and Community designs after 29 March 2019

If the UK and the EU are unable to agree a deal by 29 March 2019, the government has said that it will ensure that all EU trade marks and registered Community designs that are registered at the withdrawal date will continue to be protected and enforceable in the UK (for pending applications, see below).

The only way of achieving this objective is to 'mirror' these EU registered rights in the UK. This is what the government intends to do: it has said that it will create an equivalent trade mark or design registered in the UK that will come into force when the UK exits the EU. The trade mark or design will then be treated as though it had been applied for and registered under UK law.

The precise mechanics of these equivalent rights are currently unclear; although the government has said that the rights will be provided with “minimal administrative burden”, it is not clear what this means exactly, or, indeed, if there will be a fee for the new UK rights. The implication of the technical notice is that an EU registration will acquire the status of a separate UK registration and be enforceable as such. Presumably the owner will be the same entity as is shown on the EU register, and the UK right will be renewable when the EU registration would have been. However, whether EU registrations will automatically acquire a UK registration number, or whether this will occur as and when a step needs to be taken (such as renewal or enforcement) remains to be seen. We will continue to monitor the situation closely.

Separately, it seems that the government has not yet reached complete agreement on how international trade marks filed with WIPO under the Madrid system, which designate the EU, will be protected in the UK after withdrawal. The government says it is “working to provide continued protection” in the UK from March 2019 for international trade marks and designs filed through the Madrid and Hague systems which designate the EU. However, the arrangements for this are yet to be agreed.

Pending applications

The government has confirmed that businesses, organisations and individuals who have EU trade mark and design applications pending at the time of the UK’s withdrawal would need to refile their application with the UK Intellectual Property Office using the normal application process – i.e. equivalent UK rights will not be created for pending applications. However, provided that applicants apply for protection in the UK within nine months of the date of withdrawal, they will be able to preserve the “priority date” (the date on which the application was made in the EU) of their application. This means that, if their trade mark or design is granted protection, they can claim protection for the mark or design from the date on which they originally filed for protection in the EU, rather than the (later) date when they applied in the UK.

New applications after Brexit

After Brexit, applicants will continue to be able to apply for protection in the EU by applying to the EUIPO for an EU trade mark or registered design, but these will not protect marks or designs in the UK. Applicants wishing to gain registered protection for their trade marks and designs will need to apply to the UKIPO for a separate UK registered trade mark or design (as, for example, they must do in Switzerland to secure registered trade mark or design protection in Switzerland, which is not part of the EU).

Unregistered Community designs

If there is no deal in March 2019, the government says it will ensure that unregistered Community designs will continue to be protected by creating a new unregistered design right to mirror the characteristics of the EU right, to be known as the supplementary unregistered design right. This will be a relief to designers who rely on this important right to protect their designs, although the specific workings of this supplementary right are yet to be ironed out.

Conclusion

The latest draft of the UK-EU Withdrawal Agreement included provisions to ensure that the UK would create comparable rights to EU trade marks and designs in order to prevent EU rights existing as at the withdrawal date from ceasing to apply in the UK. It is helpful to have the government’s thinking on trade marks and designs in the event that no such agreement is reached set out in the technical notice, and owners of EU rights will welcome the commitments made. However, as with all things Brexit, it seems that the precise mechanics for the protection of EU trade marks and designs in the UK following departure from the EU are still subject to clarification. EU trade mark and design owners are advised to continue to monitor the situation for developments.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Farrer & Co LLP, October 2018