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What does Brexit mean for EU Trade Mark and Community Design registrations?

It is a little over 85 days until 31st October 2019, the date on which the UK is, under current UK law and the provisions of Article 50 of the Treaty on European Union, scheduled to leave the European Union (EU). The general tone of the statements made by Boris Johnson, the UK’s new Prime Minister, and other newly appointed Ministers is that it is quite possible that the UK will not seek to extend the 31st October deadline and that the UK will exit the EU with no withdrawal agreement / transition provisions in place on that date unless a new agreement can be reached with the EU concerning withdrawal. It is unknown whether a new agreement will prove possible but it does appear that the UK and EU have quite different views about this possibility.

What could happen to your EU Trade Mark and Community Design registrations?

If the UK leaves the EU with no withdrawal agreement / transition provisions in place, the legislation put into place by the UK government for continued protection for EU Trade Mark and Community Design registrations and applications will come into force in the UK on the exit date.

When those provisions come into force then registered EU Trade Marks, International (Madrid) Trade Mark registrations designating the EU where the registration process is complete, registered Community Designs, and International (Hague) Design registrations designating the EU where the registration process is complete (collectively referred to as “EU Trade Mark and Design registrations”) will be cloned by the UK Intellectual Property Office (UKIPO) and equivalent UK Trade Mark and UK Design rights generated.  Those UK equivalent rights will effectively be UK national Trade Mark and Design registrations. 

The cloning will be automatic and deemed to occur as soon as the UK leaves the EU, but it may be some time before the UKIPO notifies the holders of EU Trade Mark and Design registrations that the cloning has taken place and the registration number allocated to the UK equivalent right.  The format of the UK registration numbers is, however, known and the UK equivalent numbers will be as shown in the examples below:

 

Registered Right

EU registered number

WIPO registered number

UK Equivalent registered number

EU Trade Mark

 

 

 

For example:

000340513

 

The last 8 digits of the EU number prefixed with UK009

For example:

UK00900340513

 

EU designation of an International (Madrid) Trade Mark registration

 

 

 

 

 

 

 

 

For example:

917273

The last 8 digits of the WIPO number prefixed with UK008

For example:

UK00800917273

 

Community Design Registration

 

 

 

For example: 004048098-0004

 

The full EU number prefixed with 9

For example:

90040480980004

 

EU designation of an International (Hague) Trade Mark registration

 

 

 

For example:

D069640-0001

 

 

For example:

DM/069 640

The full International (EU) number prefixed with 8

For example:

80696400001

 

 

When the cloning takes place, the UKIPO is proposing to record the same details for the UK equivalent right as are recorded for the EU Trade Mark and Design registrations. This includes details of the proprietor and the representative for the EU Trade Mark or Design registration.

 This will have the effect that any EU Trade Mark or Design registration with a non-UK representative will have a non-UK representative for the UK equivalent rights. If you would prefer to have a UK representative looking after those equivalent rights, then a UK representative will need to be instructed. Swindell & Pearson would be very pleased to take those UK equivalent rights into our care. We believe that it would minimise risk to place the UK equivalent rights into the care of UK representatives because this will ensure that the representatives in the UK are aware of all developments and changes in UK Trade Mark and Design law and practice as they occur. Such developments may well diverge from EU law and practice.

How we can help with your EU Trade Mark and Community Design registrations.

To allow Swindell & Pearson to take the UK equivalent rights into our care all that we need are your instructions. We do not need a power of attorney.

We will make no charge for taking the UK equivalent rights into our care.

 If you wish Swindell & Pearson to take UK equivalent rights into our care then we would ask that when you send us instructions, those instructions are accompanied by an excel spreadsheet containing at least the following details about the EU registrations for which we are to take the UK part into our care: 

  • the registration number;
  • the trade mark / design title;
  • the proprietor;
  • the application date (preferably in DD/MM/YYYY format);
  • the next renewal date (preferably in DD/MM/YYYY format); and
  • your reference.

We are requesting an excel spreadsheet with the above data, preferably sorted by next renewal date with the earliest renewal date first, so that we can ensure that we prioritise processing of those UK equivalent rights with the earliest next renewal dates. 

We note that if we receive instructions to take UK equivalent rights into our care before the UK leaves the EU then we will regard those instructions as being dependent upon a UK exit from the EU on 31st October 2019 or within three months of that date.  If the UK exits after 31st January 2020 then we will seek to confirm your instructions closer to the actual exit date.

For all EU Trade Mark and Design registrations that have a renewal due date after the exit date, the UK equivalent right will need to be renewed on the next renewal date or any later date that the UKIPO may set. This requirement for renewal will not be affected by renewal of the EU Trade Mark or Design registration before the exit date.  In other words, renewal of EU Trade Mark or Design registrations before the exit date will not avoid the need to renew the UK equivalent right.

It is possible, in some circumstances, to request not to receive a UK equivalent right, so called “opting out”. If you wish not to receive UK equivalent rights please contact us so that we can determine whether opting out is possible in the circumstances associated with the particular trade mark or design in question.

What if your application is pending?

With regard to applications for EU Trade Mark and Design registrations that are pending on the day the UK leaves the EU there will be no automatic cloning of those applications.

For pending applications, if these are to be continued in the UK, UK equivalent rights will need to be applied for within 9 months of the exit date.  Those UK equivalent applications will be awarded the same priority, filing and seniority dates as the equivalent applications for EU Trade Mark and Design registrations.  The application for the UK equivalent rights will be examined in the same fashion as a UK national application, and involve the same official fees. To file such applications all we need are your instructions to do so. We do not need any power of attorney.

Shortly after the exit date we will be reviewing all pending applications for EU Trade Mark and Design registrations in our care and contacting our instructors for instructions. The review will include consideration of the effects of Brexit on pending Oppositions and other contentious proceedings our clients are involved with that involve EU Trade Mark and Design registrations or applications for those rights. For example, if you are opposing an EU trade mark application we will need to keep a watch to see if an application for a UK equivalent to the opposed EU application is applied for. If it is, then it may be appropriate to oppose that UK equivalent application when it is possible to do so.

With regard to pending applications for EU Trade Mark and Design registrations not in our care, we will be very happy to review and advise on those applications if we are asked to do so.

Get in touch.

If we can offer any assistance in connection with IP in the UK at this time or in the future, please do not hesitate to contact your usual contact at Swindell & Pearson or Antony Gallafent at antony.gallafent@patents.co.uk

 

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