For advice and help call us onLondon 020 7637 7043 Dundee 01382 598 424
On 24 September 2018, the UK Government issued Guidelines on what will happen to European Union Intellectual Property Rights if the UK and the EU are unable to reach an agreement before the UK leaves the EU, a so-called "No Deal Brexit". Some of the following points are subject to change if an agreement is reached.
Now is the time to audit your trade mark and design portfolios:
•Be prepared for the creation of equivalent UK Registrations for your existing EU Trade Mark and Community Design Registrations. Two Registrations will mean two sets of renewal fees will need to be paid. You may want to opt out of the creation of the equivalent UK Right if you already have an existing UK Registration.
•Be ready to re-file for any EU Trademark Applications and Community Design Applications which are still pending on 29 March 2019. A request to create an equivalent UK Application must be filed and the UK Application fees must be paid by 29 December 2019. It may not be needed if you already have a suitable Registration in the UK.
We are happy to assist you with a review of your portfolio and to provide recommendations of which applications/registrations need to be actioned.
The Guidelines state that any existing EU Trade Mark Registration or Community Design Registration will continue to be protected in the UK by the automatic creation of an equivalent UK Registration. Owners of existing registrations will be notified of the creation of the equivalent Right and it will be possible to opt out if you do not want an equivalent UK Registration. The existing EU/Community Registration will continue to be in force in the remaining member states of the European Union.
Subsequently, owners of EU Trade Mark Registrations and Community Design Registrations and the newly created equivalent UK Trade Mark Registrations and UK Design Registrations will have to pay separate renewal fees for the existing EU/Community Registrations as well as the newly created equivalent UK Registrations.
The Government is working, including with WIPO, to ensure a similar continuation of protection for EU designations of International Registrations under the Madrid Protocol (Trade Marks) or the Hague Convention (Designs).
The Guidelines state that applicants for pending EU Trade Mark Applications or Community Design Applications will have to reapply in the UK within 9 months of the leaving date in order for their EU Application to be converted into an equivalent UK Application which will keep all the filing, priority and seniority dates of the original EU/Community Application. Applicants will not be notified of the need to reapply.
The Guidelines indicate that the new UK Rights will be created with "minimal" administrative burden, but for pending EU Trade Mark Applications or Community Designs Applications, applicants will have to pay UK filing fees as part of the process of creating an equivalent pending UK Application from the EU/Community Application.
If the UK leaves the EU on 29 March 2019 (the leave date) with no deal, EU/Community Applications still pending on 29 March 2019 will have to be re-filed before 29 December 2019 if they are to retain the original filing, priority and seniority dates in the UK Application.
The Government is working, including with WIPO, to find a practical solution to ensure the continuation of protection for EU designations of International Registrations under the Madrid Protocol (Trade Marks) or the Hague Convention (Designs) which are still pending on the leave date.
The Guidelines state that Unregistered Community Design Rights will continue to have protection in the UK for the remaining period of protection of the Right after the UK leaves the EU.
Additionally, it is intended to create an equivalent UK Unregistered Design Right that mirrors the characteristics of the current Unregistered Community Design Right for designs disclosed after the leave date.
The existing UK Unregistered Design Right, for designs first disclosed in the UK, will continue to be protected.
The Rights will be created automatically and so no additional action is required by the rights holder.
The Guidelines state that there will be no immediate change to the UK address for service or privilege rules.
The process of creating an equivalent UK Application or Registration mirrors the process set out in the proposed agreement between the UK and the EU and so does not represent any policy change, whether or not there is an agreement. The date by which any Applications have to be re-filed could change depending on whether any transition period is taken into account if an agreement is reached.
Provision will be made regarding the status of ongoing legal disputes based on an EU Trade Mark/Community Design Registration right but no details have been released on that issue.
Following a recent meeting between high-level representatives of the EPO, including the EPO President, and the UK Chartered Institute of Patent Attorneys (CIPA), the EPO have confirmed that Brexit will have no consequence on UK membership of the European Patent Organisation, nor on the effect of European patents in the UK. European patent attorneys based in the UK will continue to be able to represent applicants before the EPO.
The following points have been agreed by the UK and EU negotiators of Brexit. Whilst the UK Parliament or EU Parliamentary can refuse to agree to these points, that is unlikely.
There will be a transition period which expires on 31 December 2020.
Registered EU Trade Marks, Community Registered Designs and Community Plant Variety rights granted before the end of the transition period will become comparable UK rights.
The comparable UK Trade Mark rights will retain all the same details as the originating EU registration including the filing date, priority date, UK seniority date, and renewal dates.
For Community Registered Designs and Community Plant Variety rights, the term of protection in the UK will be at least equal to the remaining term on the originating EU right. The filing date and any priority dates will be retained.
If there is an ongoing invalidation or revocation action as at the last day of the transition period which subsequently results in the originating EU right being declared invalid or void, any comparable UK right created as above will also be declared invalid or void. However, the UK will have the discretion to maintain the comparable UK right if the reasons for the decision on the originating EU right do not pertain to the UK.
The UK will also ensure that EU designations in International Trade Mark or Design registrations also continue to have comparable protection in the UK.
Owners of Unregistered Community Design rights will become the owners of an enforceable right in the UK, with the same level of protection and with a term of protection that should be at least the same as the remaining period of the Unregistered Community Design right.
Owners of a Registered EU Trade Mark that have a reputation in the EU at the end of the transition period will be allowed to enforce that reputation in the UK.
Rights exhausted in both the UK and EU as at the end of the transition period will remain exhausted.
The following points have been proposed but not agreed by the UK and EU negotiators of Brexit.
The transfer of an EU/Community Right into a comparable UK right will be free of charge to the holder.
The owner of an EU/Community Right will not be required to file an application to transfer those rights into a comparable UK right.
The owner of an EU/Community Right will not be required to have an address for service in the UK for the comparable UK right.
Regarding geographical indications/designations of origin/traditional speciality agreed designations - those entitled to use those terms on the last day of the transition period will be entitled to the same comparable right in the UK after the transition period expires.
Applications for supplementary protection certificates submitted before the end of the transition period to a UK authority will be governed by EU regulations.
Pending EU applications for trade marks and plant variety rights should be used as priority claims for new UK applications filed within six months of the end of the transition period.
EU representation rights should be granted to UK attorneys.
The UK's formal separation from the EU will have no impact on the granting of patents by the European Patent Office either now or in the future, and there will be no impact on the representation rights of UK attorneys before the European Patent Office. The European Patent Convention is not linked to the EU, and many of the current contracting states are not EU members.
Regarding the start of the Unitary Patent and Unified Patent Court, a legal challenge has been filed by a private individual with the Federal Constitutional Court of Germany (Bundesverfassungsgerichit, BVerfG) to the constitutionality of the German legislation enabling the ratification of the Agreement on a Unified Patent Court. In order for Germany to ratify the legislation, the BVerfG must firstly decide whether or not the challenge presents a serious issue for the court to consider, and if so then secondly whether or not the Agreement is unconstitutional. The deadline for interested parties to submit comments to the BVerfG was 31 December 2017.