Brexit: How would it affect trade marks and designs filed before EUIPO

It is less than 10 days until 29 March 2019, the date on which the United Kingdom (UK) is, under current UK law and Article 50 of the Treaty on European Union, scheduled to leave the European Union (EU). The recent votes in the British Parliament do not change this legal framework, although an extension of this deadline may be granted.

Even though we do not know exactly what is going to happen in the next days, it is important for all of us to know the way in which it is expected that the rights on EU Trade Marks and Community designs continue to be protected and enforceable in the UK.

The UK Intellectual Property Office (UKIPO) has announced the provisions that will come into force on the exit date for continued protection in connection with EU Trade Mark and Community Design registrations and applications. It is likely that they will be substantially the same with or without a deal. We briefly explain them below:

• Registered EU Trade Marks and Community Designs will be cloned by the UKIPO and equivalent UK Trade Mark and UK Design rights generated. This cloning will have the minimum administrative burden and, in principle, will generate no costs for right holders.

• To continue pending EU Trade Mark and Community Design applications in the UK, UK applications can be filed within 9 months from the exit date and those applications will be deemed to have the same filing, priority and seniority dates as the EU application. In this case, corresponding filing fees will have to be paid.

• Regarding renewals with deadlines subsequent to 29 March 2019, or subsequent to the new date set as a result of an eventual extension of the date for the UK to leave the EU, it is important to note that the renewal effected before the EUIPO before Brexit does not mean that the trade mark or design is to be deemed also renewed in the UK. That is, the trade marks and designs with deadlines subsequent to the exit of the UK from the EU should be renewed separately before the UKIPO after Brexit is effective. It will be possible for us to carry out the corresponding formalities before the UKIPO with no need to appoint a local representative to this effect.

• In order to facilitate the identification of new files generated before the UKIPO corresponding to files originated before the EUIPO, the number allotted to them will keep the EUIPO number plus the prefix UK009. Thus, a EUTM under EUIPO number 000340513 will have number UK009000340513 before the UKIPO. In this manner, it is intended to keep the conversion process as simple as possible.

In CURELL SUÑOL we are carefully monitoring the Brexit process in order to be aware of any news coming from the UK and EU authorities and prevent any negative impact to our clients’ Intellectual Property rights.

Do not hesitate to contact us should you need any further information or clarification.