Charlotte Wilding sets out the position regarding EU trade marks, designs and domain names should the UK ‘get Brexit done’ by the current date of 31 January 2020 and leave the EU with or without a deal.

Business as Usual

Firstly, Kemp Little confirms that there will be no disruption to clients with EU trade marks or designs even in the case of no deal and no extension.

Exit Day

The key date to be aware of is the “Exit Day”, which will differ depending on whether the UK leaves the EU with or without a deal.

Should the UK leave the EU without a deal, Exit Day will be the date on which Article 50 ends. However, if a Withdrawal Agreement is finalised and agreed, this will contain a transition period in which the UK is no longer a part of the EU but is still bound by EU rules. The expiry of this transition period will be the relevant Exit Day.

Any reference to Exit Day within this article refers to either the date in which the UK leaves the EU with no deal or the date at the end of the transition period.

Registered Trade Marks and Designs

The UK IPO has confirmed that all registered European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will be automatically cloned on to the UK Register at 11pm on Exit Day. This will be at no cost to the proprietors and the UK IPO will notify right holders of the cloned marks once the process has been completed. If a proprietor does not wish to obtain a new national UK right, they can opt-out of the cloning process.

The new national UK right will have the same filing, registration, priority, seniority and renewal dates as the corresponding EU registered right. A UK registration certificate will not be issued, but details will be available online.

Whilst all International trade mark and design registrations that currently designate the EU will also be cloned on to the UK register. These will be cloned as standalone new national UK rights and not UK designations of the International Registration.

Pending Trade Marks and Designs

Where an application is still under prosecution at Exit Day (including those accepted for registration but not yet registered), it will be necessary to re-file in the UK if separate protection is required. The UK IPO has confirmed that proprietors will have nine months from Exit Day to re-file in the UK and claim back the original filing, priority and seniority dates in the corresponding EU application. These newly filed applications will incur the usual costs set out in the UK IPO’s application fee structure.

Unregistered Design Rights

All EU unregistered designs existing at Exit Day will continue to be protected in the UK until the EU right expires. A new UK “supplementary unregistered design right” is being created, equivalent to the EU unregistered design right, for new designs. It is currently unclear whether an EU unregistered design right will arise if first disclosure occurs in the UK, or whether a UK supplementary unregistered design right will arise if first disclosure occurs in the EU, so it may be sensible to make simultaneous disclosure.

Renewal

New national UK rights will need renewing separately in the UK, in addition to the renewal of the existing EU right at the EUIPO if both registrations are to be maintained. As the EU designations of an International Registration will be cloned as standalone UK national rights, it will be necessary to subsequently renew such rights in the UK, rather than renewing under the International Registration process.

Trade Mark Use

Use of a trade mark in the EU (and not necessarily in the UK) prior to Exit Day will be sufficient to maintain a new national UK right for a five year period after Exit Day. Use of a trade mark in the EU (and not the UK) after Exit Day will not be taken in to account. After the five year period, if the new national UK right has not been used in the UK, it will become vulnerable to cancellation on the basis of non-use. It is not clear whether use in the UK will continue to validate the existing EUTM for a period after Exit Day.

Customs

An EU Customs Application for Action filed via the UK HMRC will be replaced with a UK Customs Application for Action on Exit Day. In order to maintain customs protection throughout the EU after Exit Day, a fresh EU Customs Application for Action will need to be filed.

Exhaustion of Rights

The UK will continue to recognise the EEA exhaustion regime for a temporary period after Exit Day. During this period, IP-protected goods first sold in any of the continuing EU member states can continue to be imported into the UK. However, EEA member states may not recognise UK exhaustion, so export of IP-protected goods from the UK into the EEA may require the consent of the IP rights owner.

.eu Domain Names

Holders of .eu domain names must have an establishment in the EEA. Accordingly, those who only have an establishment in the UK at Exit Day will no longer qualify to hold an .eu domain. Any .eu domain name held by a UK-based entity will be withdrawn if the UK owner has not established an EEA entity within 2 months after Exit Day, and will be revoked and made available to others if the UK owner has not established an EEA entity by the first anniversary of Exit Day.

Legal Disputes

Provisions are to be made in respect of disputes relating to EU trade marks before the English Courts which are ongoing at Exit Day, but these are not yet clear. Decisions in EU IPO actions after this date will not affect the new national UK right so separate UK proceedings may be required

If you have any questions regarding Brexit and your trade mark and design protection, please do not hesitate to contact Kemp Little’s Trade Mark and Design Practice at trademarks@kemplittle.com.

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