Brexit & IP - what you need to know
Updated: Nov 20, 2021
Brexit may be nearly upon us. If this happens after 29 March there are various short term consequences to registered rights in the UK and EU. You don't necessarily need to refile a UK mark but forewarned is forearmed.
Registered EU trade marks
All existing EU trade marks will still cover the UK post Brexit but they will change identity. From Brexit day, EU trade marks in the UK will automatically convert into “Comparable Trade Marks (EU)”.
No fee is payable and the owners of these new rights will be notified by the UK intellectual property office (UKIPO) shortly after exit day.
No certificate will be provided but information on the right will be available from the UKIPO website.
All of the administrative processes from the numbering of the new right to the renewal periods that apply are designed to be as consistent with the original EU mark as possible to ensure that they are kept as simple and administratively straightforward as possible.
Applications for EU trade marks
Any pending EU trade mark applications that have not been registered “immediately before” exit day will not become “comparable trade marks.”
So, assuming we leave the EU from 30 March, only EU registered trade marks up to and including 29 March will convert.
There will be a nine month period post exit day in which to refile these pending EU trade mark applications as UK trade marks and retain the original EU filing and/or priority date.
These new trade mark applications will be treated as a UK application, and examined under UK law.
The normal UK fees of £170 plus £50 for additional classes will apply to these new UK applications.
Even if the priority period has lapsed, the new UK application can claim any valid international priority which was claimed on the corresponding EU application, (as well as any UK seniority claims recorded against it).
The UK application must protect the same mark and cover goods and services which are identical to, or contained within, the corresponding EU application (i.e. you can narrow the trade mark specification but not add to it).
Registered Community designs
Registered Community designs in the UK will also be converted into a new UK equivalent right from exit day.
The new UK registered design (presumably a "Comparable Registered Design (EU)") will be provided with minimal administrative burden.
The design will then be treated as if it had been applied for and registered under UK law.
Registered Community designs usually proceed quickly from application to grant so there is less likely to be an issue with pending design applications. However, where a design has not been registered, as for trade marks, there will be a 9 month period in which it is possible to re-apply for the registered design as a UK right and retain the earlier priority date etc.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org