As the possibility of a ‘no deal’ Brexit continues to dominate the headlines, IP owners are increasingly focusing on contingency planning. ‘No deal’ means that the UK would leave the EU at 11pm GMT on 29 March 2019 without a Withdrawal Agreement and without an agreement on the future relationship. One of the most pressing issues for IP owners in this situation is how the UK would fill the gap caused by it ‘crashing’ out of the EU unitary rights such as the EU trade mark and Design Right. At the time of writing we await further information from the UK Government on the details, and this may be forthcoming in a technical notice to be published during September. In the meantime we set out the bare bones below.
EU trade marks (EUTMs)
EUTMs will no longer be enforceable in the UK; this includes existing EUTMs registered before Brexit day. During the Withdrawal Agreement negotiations the UK agreed to grant existing EUTM holders automatic UK trade mark protection free of charge, and the UK Government has stated that it aims to ensure continuity of UK protection in a ‘no deal’ scenario also. Whether this protection will be on the same terms as envisaged by the draft Withdrawal Agreement is not yet clear; we believe, however, that the UK Intellectual Property Office (UKIPO) will not allow a situation to arise where the IP owner bears the cost. A further concern is that, in the absence of a transitional period, time to put the new arrangements into place is short. EUTM owners may – as a ‘belt and braces’ solution - wish to apply for parallel UK trade marks where possible to supplement their EUTM rights.
Registered and Unregistered Community Designs would no longer be enforceable in the UK. As with EUTMs the UK Government has stated that it aims to ensure continuity of protection in the UK for Registered Community Design (RCD) holders in a ‘no deal’ situation. Again, the terms of this are not yet clear, although, as for trade marks, we believe that the UK IPO will not allow a situation to arise where the IP owner bears the cost. Right owners may consider applying for parallel UK registered design rights if they are within the grace period for disclosure.
In relation to Unregistered Community Designs (UCDs) the UK has stated that it will establish new schemes to preserve the full scope of UCD in the UK. However, the detail and timing of this is unclear. Although a UK unregistered design right exists, its scope is narrower than the UCD in some important respects, for example, it cannot normally protect computer icons or surface decoration. UK right holders should consider taking advice on whether the UK unregistered design right will protect their key designs and also registering their designs where practicable to obtain stronger protection.
In the case of UCDs companies should also be aware that, although like EUTMs and RCDs these may be owned by non-EU entities, the first disclosure of the design must be in the EU. This means that after Brexit, a design which was first disclosed in the UK will not qualify for UCD protection.