The UK is scheduled to leave the EU in March 2019. In the event of the UK leaving the EU without a deal being reached, the UK Government has provided some guidance on how trade mark rights will be affected.
EU Trade Mark Registrations
For existing national EU trade mark registrations, the UK Government has confirmed that it will automatically provide an equivalent UK registration. Owners will be informed of the new UK registration, but will be given the opportunity to opt out. At this stage, it is unclear whether there will be costs payable.
In order to provide continued protection in the UK for trade marks protected through Madrid and Hague systems designating the EU, the UK Government is proposing to work directly with the World Intellectual Property Organization (WIPO).
EU Trade Mark Applications
For national EU trade mark applications which are still pending on the day of the UK’s exit from the EU, trade mark owners can apply to file a corresponding UK application within 9 months from the exit date. During this process, the date of the EU application will be retained for priority purposes. Additional UK application costs will be payable.
The UK Government is also proposing to discuss “practical solutions” for pending EU designations filed through Madrid and Hague systems with the WIPO.
Recommendation for Proposed New EU and UK trade mark applications
Assuming no objections are filed during examination, and no oppositions are filed by third parties, the current national EU trade mark registration process usually takes approximately 4.5 months to complete.
If you are considering obtaining trade mark protection in both the EU and UK, you may wish to consider filing a national EU application (not via the Madrid process) as soon as possible. As noted above, if no objections are raised or oppositions are filed, EU trade marks filed now are likely to be registered before 29 March 2019.
The main benefit of filing a national EU application now is that extra costs for separate UK protection (assuming the EU trade mark is registered before the UK’s exit) may be avoided (although this is not confirmed at this stage).
If trade mark protection is required in the UK on a more urgent basis, it may be preferable to file separate applications in the EU and UK simultaneously, since the timeframe for obtaining automatic equivalent UK registrations from EU registrations, and the costs involved, are uncertain at this time.
*The UK Government’s guidance notes can be located at: https://www.gov.uk/government/publications/trade-marks-and-designs-if-theres-no-brexit-deal/trade-marks-and-designs-if-theres-no-brexit-deal
Authored by Danielle Spath and Sean McManis