Brexit uncertainty: what does this mean for trade mark rights in the UK?
In mid January the UK parliament rejected the draft Withdrawal Agreement provisionally agreed between the UK government and the EU last November.
This week proposed amendments were also rejected by both sides of parliament. It is fair to assume that the Withdrawal Agreement is off the table. The EU says it will not re-open negotiations. With the UK expected to leave the EU on 29 March 2019, it appears it will be a “no-deal Brexit”.
What this means for owners of EU trade mark registrations
There is certainty for owners of EU TM registrations as the UK government has provided assurances that the necessary steps will be taken to ensure all registered trade mark rights will be recognised, protected and enforceable in the UK. It is expected that the UK rights will automatically be converted from the EU registrations into UK registrations, retaining priority from the EU registrations. The period of validity of the newly converted UK trade mark registrations, if the trade marks are not in use in the UK, is still unknown.
What this means for owners of EU trade mark applications
The UK government has indicated that post Brexit, it will allow owners of EU applications a period of 9 months to file for the mark in the UK claiming the same filing date and priority date as the EU application. We do not expect this to be a cost free exercise. We will contact clients with EU applications as more information becomes available. However for Australian clients the majority of EU applications are filed via the International Registration system, as discussed below.
What this means for owners of International Registrations designating the EU
The information from the UK government is that it will seek to provide trade mark rights in the UK which are equivalent to the rights provided by an International Registration designating the EU. It is our recommendation that EU designation trade mark owners consider filing new UK designations to their International Registrations for their key marks or if the UK market is of particular interest. We will be contacting our clients with EU designation registrations about this shortly.