Brexit & IP (March 2018)

The UK exits the European Union on 29 March 2019. From that date the UK will no longer participate in EU decision making processes.

EU law however does remain applicable in the UK until 31 December 2020. This is being referred to as the transition period.

Therefore the UK will remain within the EU intellectual property regimes until the end of this transition period. The status quo in terms of EU trade marks and EU designs will be maintained until 31 December 2020.

A potential agreement has been drafted concerning EU-wide IP rights.

It is proposed that the owner of an EU trade mark registration should be able to become the owner of an identical UK trade mark registration without any new examination being performed by UK Examiners.
The new national right will benefit from the same filing date as the original EU registration. No revocation action can be filed against the new national right, because of the lack of genuine use in the UK, before the end of the transition period. The same principle will apply to EU designations of International Registrations.

In respect of EU trademark applications which are pending on 31 December 2020, the applicants will have 9 months to file a UK trade mark application. The mark and the goods or services will have to be identical to benefit from the same application date as the EU trade mark application from which it originates.

At present the positon appears to be that following the expiry of the transition period, the proprietor of an EU trade mark cannot support the validity of that EU trade mark by referring to use in the UK. This is an important note for proprietors of EU trade mark registrations who currently rely on UK use to keep those EU registrations valid.

The upcoming negotiations will settle the remaining details of the arrangements – but as we are frequently being reminded ‘nothing is agreed until everything is agreed’.

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