Before everyone heads off to Seattle for INTA 2018 we thought we would update you on recent developments in relation to Brexit negotiations and its affect on EU trade marks and Community designs. We hope this information is of interest to you and your clients.

On 19 March 2018 the UK Government and the European Commission agreed on a deadline of the transition period (December 2020) and published an updated Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community.

The Draft Agreement sheds some light on various critical aspects of IP but, the agreement terms are still conditional, further to technical legal or policy review.

Below we have highlighted some key aspects of the agreement which relate to Trade Marks and Designs.

  1. Pending EU trade mark or Community design applications made but not completed by the end of the transition period will not offer protection in the UK, unless within 9 months from the end of the transition period a linked UK application is filed, in which case the linked UK application will enjoy the same filing and priority dates as its EU counterpart. This means that if you want to avoid refiling the application in the UK after transition period, you should aim to file the EU trade mark or Community design application by no later than the first quarter of 2020 to ensure that these is sufficient time for your mark to be registered.
  2. The protection period in the UK for registered design rights shall be identical to the remaining protection period of corresponding Community design;
  3. The UK trade mark shall enjoy the priority date, filing and first renewal date benefits of the corresponding registered EU trade mark;
  4. The UK trade mark shall not be revoked on the grounds that corresponding EU trade marks has not been put to genuine use in the UK before December 2020;
  5. The UK shall guarantee that the owners of the international trade marks or designs made through the Madrid system or the Hague system designating EU and obtained before December 2020 will continue to enjoy the protection of their corresponding IP rights in the UK;
  6. If the EU mark has acquired reputation in the EU, after the transition period this reputation shall be based on the use of the mark in the UK. In other words, you cannot rely on the reputation built up in the EU after the transition period. You will need to show reputation in the UK;
  7. EU trade marks and Community designs registered before the December 2020 deadline will be protected in the UK after the transition period;
  8. The owner of an unregistered Community design made available to the public before the end of transition period shall have a corresponding “enforceable IP right “ in the UK;
  9. IP rights which were exhausted before the end of transition period will remain exhausted both in EU and in the UK.

The UK and EU will aim at finalising the Draft Agreement by October 2018 and we will therefore be in a position to provide you with further information on this in due course.

We look forward to seeing you all there and if you would like to meet up and discuss in more details we will be happy to. In the meantime, if you have any questions on the above please do not hesitate to contact us on 01392 210700 or email trade-marks@stephens-scown.co.uk