How a Brexit “no deal” could affect your trade marks and designs?

With Brexit never far from the headlines the Stephens Scown intellectual property team explains what a “no deal” could mean for your trade marks and designs.

In May this year I set out key aspects of the Brexit Draft Agreement on the withdrawal and the Brexit “deal” scenario in relation to EU trade marks and Community designs which you can find here .

However, with a “no deal” scenario being a very viable result, what does this mean for your trade marks and design rights? In this article, I highlight key considerations in the event of a “no deal” scenario. This article is based on the UK’s guidance in relation to trade marks and designs which can be found at the following here.

As it currently stands, any legal entity owning an EU trade mark or Community design/unregistered design right enjoys protection in all 28 EU member states including the UK. However, this might not be the case after the UK leaves the EU in March 2019.

Trade marks post- Brexit “no deal” scenario

EU registered trade marks will no longer cover the territory of the UK, however they will be effective in the rest of the EU Members States. The UK government states that equivalent UK rights can be obtained “with minimal administrative burden”. This means that if you own a registered EU trade mark you could obtain a corresponding UK right after Brexit. However it is unclear what “minimal administrative burden” means and whether additional costs will be incurred in achieving this.

Pending EU trade mark applications made but not completed by the end of the exit date will not be offered protection in the UK, unless within 9 months from the exit a linked UK application is filed. In case of refiling, a UK application will enjoy the same filing and priority dates as its EU counterpart, however it is likely to follow a normal UK trade mark registration process. This may mean that a new linked application may need to be filed, examined and go through a second round opposition period. This could lead to further costs being incurred.

There is no guidance yet in relation to the ongoing trade mark disputes that are not concluded by the date of Brexit. We will update you on this in due course.

Community designs post- Brexit “no deal” scenario

Community designs will no longer cover the territory of the UK, however they will be effective in the rest of the EU members. The equivalent UK right can be obtained “with minimal administrative burden”. As with trade marks, this means that if you own a Community design you could obtain a corresponding UK right after Brexit. However it is unclear what “minimal administrative burden” means and whether additional costs will be incurred.

Pending Community design applications made but not completed by the end of the exit date will not be offered protection in the UK, unless within 9 months from the exit a linked UK application is filed. In case of refiling, a UK corresponding application will enjoy the same filing and priority dates as its EU counterpart, however it is likely to follow a normal UK design registration process. This may mean that a new linked design application may need to be filed, examined and go through a second round of checks.

There is no guidance yet in relation to Community design disputes that are not concluded by the exit date. We will update you on this in due course.

Unregistered Community designs post- Brexit “no deal scenario”

Unregistered Community design rights which arose before the Brexit date will still be valid in the UK post Brexit for the remaining time that the right is valid and will continue to cover the UK automatically.

There is currently no guidance in relation to the ongoing unregistered design disputes in the UK courts. We will update you on this in due course.

Trade mark and designs – conclusion

According to the UK’s guidance, the “continued protection” of trade mark and design rights would be at the heart of a Brexit “no deal” scenario. However, it should be noted that the guidance is not comprehensive and it is unclear on the meaning of “minimal administrative burden” and other potential pitfalls of a Brexit “no deal” scenario.

Therefore, if you want to de-risk the situation, avoid the Brexit ambiguity and additional “administrative burdens” which may well be an additional financial constraint, the trade marks team at Stephens Scown can provide you with a cost effective solution tailored to your business needs.

If you would like more information on how to maximise your trade mark protection, please contact us.

Stay tuned as we will be updating you on Brexit developments in relation to trade marks and designs.