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BREXIT – Effects on EU trademark and/or Community design

The no deal Brexit has meanwhile become very likely so that the United Kingdom (UK) will probably leave the European Union on March 29, 2019 without any contractual agreement. Apart from the economic consequences which are currently not yet clear, 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 a 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. Best Case Szenario

a) Registered EU protective rights

The current government of the United Kingdom would like all registered EU protective rights to remain protected and enforceable in the United Kingdom by providing so-called “equivalent trademarks and designs”.

Owners of EU protective rights should 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” should 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.

b) 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.

If this plan takes effect depends on whether the current government remains in force and adheres to to this plan.

2. Worst Case Szenario

With the no deal scenario of the EU exit of the United Kingdom, EU protective rights can in the worst case lose their validity in the United Kingdom and remain intact in the 27 remaining EU member states, only.

The current UK government does not want this and has therefore drawn up the plan for the continuance of registered EU protective rights which we have explained under point 1. What will, however, happen when the government or the plan do not remain in force?

  • In order to be absolutely on the safe side in case of this scenario, you can file applications for national UK trademarks or UK designs now already, if your EU protective right is used in the United Kingdom or if the market there is currently and/or in future important for you. Please note, however, that this UK protective right only enjoys the current application date as the seniority. The better seniority and/or priority of your EU protective right will not be kept.

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

Contract partner should check their contracts or agreements relating to EU protective rights (e.g. as licensee, licensor or party of a co-existence agreement and the like) 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)

source: www.gov.uk/government/publications

© Bockhorni & Brüntjen
Partnerschaft Patentanwälte mbB

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