Has the UK’s decision to leave the EU affected trade mark and design protection?

At the present time EU trade mark and design protection remains unchanged. This is likely to remain the case until Brexit actually happens, which it is anticipated will be at least two years from when article 50 is invoked and the formal negotiations for the UK’s withdrawal from the EU begin.

What will happen when Brexit takes effect?
When Brexit takes place, the existing UK arrangements with the EU and the UK’s trading arrangements with the rest of the world which rely on EU membership will lapse, unless replacements are agreed. This will affect unitary IP rights which currently have application across the 28 member states of the EU – including the UK.

What will happen to EU trade marks?
Once the UK leaves the EU, unitary IP rights such as the EU Trade Mark will cease to have effect in the UK. It is anticipated, however, that arrangements will be put in place to ensure either that EU trade mark rights are formally recognised in the UK as continuing to have effect, or by giving rights holders the opportunity to ‘convert’ part of the EU right into a national UK right.

What will happen to registered Community designs?
Registered community designs will also cease to apply in the UK when Brexit takes effect. Again, it is anticipated that arrangements will be put in place to recognise their continued effect or to give rights holder the opportunity to ‘convert’ part of the unitary right into a national right.

What about Community unregistered design rights?
Community unregistered design right is more problematic. As there is no formal ‘registration’ to convert to a national right, this protection may be lost unless the UK passes new legislation creating an equivalent right. The UK already has an unregistered design right which protects shape or configuration of a product (as opposed to the appearance of a product including surface decoration protected by the Community unregistered design right) and it is conceivable that this could be extended to bridge the gap in protection.

Should any action be taken now in relation to existing trade mark registrations?
Trade marks which are not put to genuine use within the EU for a period of 5 years become vulnerable to revocation. It is not clear how this use requirement will apply post-Brexit to an EU trade mark which has only ever been used in the UK (or indeed an EU trade mark which is ‘converted’ to a UK national right but which has only ever been used outside the UK). A fair outcome for brand owners would be to treat any use of a mark in the EU, during the period when the UK was still a member of the EU, as counting towards the genuine use requirement. Until more is known about how this will be dealt with, the safest position brand owners who wish to retain protection across these territories can put themselves in is to ensure usage both in the UK and elsewhere in the EU.

What about new trade mark applications?
An EUTM will continue to provide valid and enforceable protection in the UK until such time as Brexit takes effect. It is then likely that transitional provisions will operate to ensure continued protection in the UK for holders of EUTMs. If this were not to happen it would adversely affect and discourage brand owners’ trade in the UK, something the Government would likely seek to avoid. For the time being, therefore, there should be no need to apply for separate UK and EU trade marks.

What will happen to seniority claims in EU trade marks?
Any UK seniority claims in an EUTM will cease to have effect from the date the UK exits the EU. Seniority claims from other EU member countries will not be affected. We would advise retaining any UK national right which forms the basis of a seniority claim in an EUTM to ensure the best protection for the trade mark in the UK. Legislation may be implemented which allows UK national rights previously lapsed as part of a seniority claim to be restored.

What about international trade mark registrations?
At present, the validity of an existing International Registration based on an EUTM will be unaffected.

Once the UK leaves the EU, any UK based company looking to file a new International Registration will need to demonstrate that they have a real and effective commercial establishment in one of the remaining 27 EU member states. This is a requirement in order to meet the necessary criteria for filing an International Registration based on an EUTM, failing which it will be necessary to base an International Registration on a UK application/registration.

An existing International Registration designating the EU may require conversion in order to obtain protection in the UK, meaning that a national right in the UK will be obtained without loss of priority or filing date.