No-Deal Brexit – The Practical Effects

There is the ongoing uncertainty over the UK’s Brexit arrangements. However, the legal position on a no-deal Brexit has only changed so as to move the default date for a no-deal exit to 31 October. If a no-deal Brexit does come to pass, the status of each IP right is set out below. If you have any queries on your IP portfolio relating to Brexit, please contact us at FRKelly. We will be happy to help.

Trademarks – EUTM Registrations

Automatically cloned into UK national registrations, with a new registration number created by adding 009 in front of the EUTM number. There will be no fee for the cloning of the right, but the cloned UK registration will need to be renewed separately from the EUTM if the expiry date falls after Brexit day, with same renewal date applying. The current indication from the UK IPO is that renewing the registration early with the EUIPO will not avoid the requirement to separately renew in the UK post-Brexit (i.e. an early renewal will not be “carried through” to the UK registration). If you don’t want a UK registration for that mark, you can opt out or simply let the UK registration lapse on next renewal.

Trademarks – EUTM Applications

Pending and opposed applications have the option of being refiled as UK national applications within a 9 month deadline from Brexit day, keeping the EU date as the effective date for the UK. The usual national application fees apply for a UK trade mark. If they are not refiled in the UK, the marks will not be protected in the UK. The UK IPO will not send any notifications of the option to refile in the UK to trade mark owners.

Trademarks – International Registrations Designating the EU

Any granted EU designations will be cloned into UK national registrations which will no longer be a part of the International Registration. There will be a new registration number created by adding 008 in front of the International Registration number. The renewal date will be calculated from the date of the EU designation. An EEA representative will need to be appointed for the new UK national registration.
Any pending EU designations will need to be refiled as UK national applications within the 9 months from Brexit day, with the usual national application fees for a UK trade mark. The UK national application will not be a part of the International Registration.
If the EU designation was filed as a subsequent designation, this will mean that the renewal date for the UK national application or registration will be different to the renewal date for the International Registration.

Trademarks – Proof of Use

Cloned UK registration – use in the rest of the EU before the date of creation will be accepted as if it was use in the UK for defending revocation actions or proving use of the UK registration in opposition proceedings.
EUTM – use in the UK before Brexit day will be accepted as being use in the EU for defending revocation actions or proving use of an EUTM in opposition proceedings.

EUIPO Representation

From Brexit day onwards, the rights of UK-based attorneys to represent clients before the EUIPO will cease and they will be automatically removed from all files in those proceedings. FRKelly will continue to be fully entitled to represent applicants and registered proprietors before both EUIPO and the UK IPO.

Designs – Registered Community Designs

Automatically cloned into UK national registrations, with a new registration number created by adding 9 in front of the RCD number. Each registration in a multiple design gets its own new UK registration. There will be no fee for the cloning of the right, but the cloned UK registration will need to be renewed separately from the RCD if the expiry date falls after Brexit day, with same renewal date applying. The current indication from the UK IPO is that renewing the registration early with the EUIPO will not avoid the requirement to separately renew in the UK post-Brexit (i.e. an early renewal will not be “carried through” to the UK registration). If you don’t want a UK registration for that design, you can opt out or simply let the UK registration lapse on next renewal.
Where an RCD has been registered with deferred publication, and has not been published before Brexit day, there will be no automatic creation of a new registration. Instead, the design owner will have to file a new UK application, which will be granted with no substantive examination.

Designs – RCD Applications

Pending applications have the option of being refiled as UK national applications within a 9 month deadline from Brexit day, keeping the EU date as the effective date for the UK. The usual national application fees apply for a UK design. If they are not refiled in the UK, the designs will not be protected in the UK. The UK IPO will not send any notifications of the option to refile in the UK to EU design applicants.

Designs – International (Hague) Design Registrations

International design registrations protected in the EU under the Hague agreement will give rise to a new re-registered international design right for the UK, just as with other RCDs, but with the prefix “8” rather than “9”. Just as for RCDs there will be no cost for the creation of the re-registered international design.

Designs – Unregistered Design Rights

There is currently an EU unregistered right, which arises automatically for designs first disclosed in the EU and which lasts for three years. Where such an EU right exists on Brexit day, it will continue to be protected as an equivalent UK unregistered design with the same expiry (called a continuing unregistered design or CUD).
Where a design is first disclosed in the EU after Brexit day, no unregistered UK right will be recognised. It will qualify for protection in the remaining EU states as normal.
Where a design is first disclosed in the UK after Brexit day, no EU unregistered design right will be recognised. However it will give rise to a Supplementary Unregistered Design right (or SUD) in the UK, having the same characteristics as the current EU unregistered design right, except that it will only apply in the UK.
The UK, uniquely and sometimes confusingly, has a separate unregistered UK design right for three-dimensional articles which lasts for up to 15 years. The current law, pre-Brexit, is that individuals resident in the EU, or businesses established in the EU, or those who first disclose the design in an EU member state, can qualify for this UK design right. Post-Brexit, qualification for this right will be confined to those resident or established in the UK or a limited list of other countries, or those who disclose their designs first in such countries. Disclosure in the EU, or residence/establishment in the EU, will no longer give any entitlement to this longer UK unregistered design right, unless there is a future agreement with the EU.

Patents

No change for European Patents, as the UK will remain a full member of the EPC and this is unaffected by Brexit. The UK’s future in the Unified Patent Court remains uncertain, as indeed does the future of the entire Unitary Patent project due both to challenges in the German courts and the possible need to amend the agreement after the UK’s departure from the EU.


Niamh Hall
Partner | Trade Mark Attorney