Even though we do not yet know for certain how it actually will be, it does now seem like we are heading for a no deal BREXIT. Many of us naturally wonder what consequences such a scenario might have in relation to existing EU Trademarks and Community Designs and since the British government has provided some guidance in this respect we wish to share this information with you here below.
All EU trademarks and Community designs that are in force (registered) at the time of Brexit, i.e. on March 29, 2019, will be converted into corresponding national rights in the UK “..against a minimal administrative burden” and the holders of these rights will be notified hereof by the UK Registry. Hence, no action is needed at this stage.
The EU trademarks and Community designs which at the time of Brexit are still subject to pending applications will however not be converted into national UK applications. Instead, new corresponding national applications may be filed with the UK Registry within nine months from Brexit in order to maintain the initial application date in the EU.
Unregistered Community Designs that exist at the date of Brexit will continue to be protected also in UK for the remainder of the protection period.
As far as concerns international registrations where the EU is designated under the Madrid and Hague systems – as well as regards ongoing disputes in the UK involving EU rights, negotiations to find practical solutions are ongoing.
What considerations should be made at this stage?
For those who are in the process of applying for protection in the EU and are interested in future registration protection also in the UK may already now consider applying separately for a corresponding application in the UK.
Another possibility is to designate UK under an International application.
If you have any questions, please contact Mona Fankhauser.