BREXIT – UPDATE: Effects on EU trademark and/or Community design

The Brexit and the question whether there will be a deal between the United Kingdom (UK) and the EU has been postponed until end of October 2019 at the latest, while the EU has agreed to both possible choices, the UK leaving at an earlier date as well as to remain. In case the UK will leave the EU after all, there will be consequences for owners of EU trademarks (EU trademarks), internationally registered trademarks designating the EU and registered Community designs (EU designs), in the following all referred to as EU protective rights. This will also have consequences on contracts and agreements which contain regulations as to EU protective rights which apply to the EU.

Currently, owners of an EU protective right enjoy protection of right in all 28 EU member states, including the United Kingdom. In case of the UK leaving the EU without any agreement, the legal situation changes as follows:

1. Registered EU protective rights

The UK Parliament has recently approved Statutory Instrument 2691, according to which all registered EU protective rights remain protected and enforceable in the United Kingdom by providing so-called “comparable rights”. This law will become effective in case of a hard Brexit.

So far this has been the exact intention in the most recent version of the Draft Agreement between the UK and the EU as well (Art. 54 – 61,as of November 14, 20182).

Owners of EU protective rights shall automatically be granted a so-called “equivalent right” with minimum administrative burden from the time that the United Kingdom leaves the EU. The “equivalent right” will be treated as if it had always been applied for and registered under UK right. Protective right owners will receive a letter informing them that a national UK trademark and/or national UK design is now registered.

If owners are then not interested in a national protection in the UK, they can opt out and have the national trademark or the nationally registered design deleted.

2. Pending applications of EU protective rights

In case of “pending applications at the time of the Brexit” of EU protective rights, applicants can file a national UK application within a deadline of nine months as from the date of exit of the UK. The trademark is applied for using the normal application process in the United Kingdom and has the same application date as the pending earlier EU trademark application, its earlier priority and/or seniority.

3. Validity of agreements (such as licenses, co-existence agreements and the like)

Irrespective of whether owners of EU protective rights can receive so-called “comparable rights” in the UK, this does not have any effect on any privately concluded contracts or agreements relating to those EU protective rights (e.g. as licensee, licensor or party of a co-existence agreement and the like). Therefore, contract partners should check their contracts or agreements as to whether the “European Union” is mentioned as the geographic region of validity. If this is the case, agreements/contracts must be adapted with an addendum in order to cover the UK for future, too.

Vanessa Bockhorni &
Thorsten Brüntjen
(Patent Attorneys)

1http://www.legislation.gov.uk/uksi/2019/269/made/data.xht?view=snippet&wrap=true
2https://ec.europa.eu/commission/sites/beta-political/files/draft_withdrawal_agreement_0.pdf

Sources:
http://www.legislation.gov.uk/uksi/2019/269/made/data.xht?view=snippet&wrap=true
https://ec.europa.eu/commission/sites/beta-political/files/draft_withdrawal_agreement_0.pdf

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