07. February 2019
Consequences for IP owners - Brexit
The UK is preparing to exit the European Union as of March 29, 2019. The BREXIT will have consequences and may quite significantly affect owners of IP rights, in particular of EU trademarks and EU designs. Therefore, we have been closely monitoring the developments regarding this upcoming UK exit from the European Union and the negotiations conducted throughout the whole period since the decision to exit was made.
Deal or no deal
Until the date of exit the UK will remain part of the EU and the status after the exit depends on whether a deal can be reached between the UK and the EU. In case a deal is reached, there will be a further transitional period in which the status quo is maintained and no necessity will be given to re-apply for trademarks or designs.
In case no deal is reached, the UK will no longer be part of the EU trademark and EU design system. Today, it is quite likely that we need to expect a "no deal situation".
Consequences for trademark and design rights in the case of a Brexit without deal
UK authorities (Government and UKIPO) have always assured that an automatic conversion of EU registrations will take place to an equivalent national UK right. Furthermore, the same authorities also assured that applicants of pending applications will be given the possibility to file a request for conversion to a UK application – most likely within nine months. Considering the above, it seems that there is no urgent necessity to re-file EU trademarks and/or EU designs in UK, even in the "no deal" scenario.
A "no-deal" seems likely and no one really knows how the situation will develop. Moreover, it remains to be seen whether the UK Government's past promises will be kept. Therefore, we kindly advise all owners of EU trademarks and EU designs to carefully consider their position in the UK.
It might be worth considering to file a national UK application separately from your pending EU trademark and/or design in order to obtain legal certainty, in particular with respect to issues of use/non-use and enforcement, and to avoid any risk of possible loss of dates or rights.
Please do not hesitate to contact us in case of questions. We would be very pleased to assist you, in particular with the filing of trademarks or designs in UK.