27. March 2018
Latest news with regard to the effect of the Brexit on EU trademarks and Community designs
The UK and the European Union (EU) have agreed that there will be a transition period from March 29, 2019, to December 31, 2020, during which the UK will remain part of the EU (with some exceptions most of the EU law will be applicable to and in the UK during the transition period). It was further agreed that owners of EU trademarks and Community designs will have their rights protected in the UK after the transition period. That means that there is no need to double file trademarks and designs at the EUIPO and the UK Intellectual Property Office until the end of the transition period. Moreover, until the end of the transition period (December 30, 2020) trademark and design protection with effect to the UK can still be obtained by filing an EU trademark or Community design.
The announcement comes as part of the release of the EU and UK government's draft agreement on the latter's withdrawal from the EU, published on March 19, 2018. The draft agreement includes provisions on protection and enforcement of Intellectual Property (IP) rights after the end of the transition period. While the agreement is still a draft, some of the provisions on protection and enforcement of Intellectual Property (IP) rights are finalized on a negotiator's level (i.e. it can be assumed that these provisions will not be subject to a substantive revision anymore).
According to such a provision finalized on a negotiator's level, the owners of the EU trademarks and Community designs shall, without any re-examination, become the holder of a comparable registered and enforceable trademark or design in the UK.
Specifics of creating equivalent UK trademarks and designs from existing EU trademarks and Community designs is still up for negotiation. It will be interesting to see whether such creation of equivalent UK trademarks and designs will be possible without charge or administrative burden to rights owners or not (as is actually proposed by the EU in the draft agreement). There are other points of detail which need to be agreed, particularly the ability for UK chartered trademark attorneys to continue to represent clients and businesses before the EUIPO, for example.
However, at least uncertainty about the need to double file trademarks and designs at the EUIPO and the UK Intellectual Property Office is ended by the latest agreement between the UK and the EU.
