Fri 22nd Mar 2019

Brexit & IP – Implications for trade marks and registered designs

Amidst the ongoing uncertainty regarding Brexit, this is the current position and the anticipated effects of Brexit on trade marks and designs.

Please note the European Patent Office is not an EU institution and European patents and patent applications are not affected by Brexit.


REGISTRATION of EU trade marks and designs

Territorial rights will be split so that, going forwards, you will have separate UK and EU wide rights.

 

It is possible to opt out of having the separate UK rights in most circumstances.

 

Implications: Contact us, if you do not wish to have separate UK registered rights.


RENEWAL of EU trade marks and designs

If you have an EU trade mark or design registration that is due for renewal after the relevant Brexit date, it will be necessary to pay a renewal fee for the separate UK case. It is not possible to avoid this by paying the renewal fee on the EU registration before the Brexit date. The earliest deadline for any renewal of a converted UK case would be 6 months after Brexit.

 

Implications: Cases will need to be reviewed by renewal date.


PENDING APPLICATIONS for EU trade marks and designs

Those with pending applications at the relevant Brexit date will have 9 months to apply for a new UK trade mark or design application with the same filing details as the pending EU application, for a fee.

 

In practice, this is more relevant to EU trade marks, rather than EU designs, as most EU design applications are registered within 24 hours.

 

Implications: Contact us to review your plans in light of Brexit.


Is double filing required?

Given the uncertainties as to the start date of any Brexit, there is little benefit in double filing of both UK and EU applications for the same IP before Brexit, unless there are special circumstances - for example, very important marks, or known disputes that may impact on getting EU wide rights.

 

If there is a delay to Brexit or a deal is reached between the UK and the EU, it is more likely that pending EU applications will reach registration which will avoid the need for brand owners to re-file in the UK.

 

Implications: We can discuss with you obtaining UK rights where you have EU applications.


Your IP is safe with Page White and Farrer

With offices in London and Munich, and a team of European, German, French and UK qualified patent, trade mark and design attorneys, we provide a comprehensive one-stop service for European IP.

 

The issues concerning Brexit are evolving quite quickly, but in the meantime, do not hesitate to contact us on 020 7831 7929 if you have any questions concerning the impact of Brexit.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in March 2019.

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