European Commission notice regarding Brexit and EU IP rights
21 December 2017
On 5 December 2017 the European Commission together with the European Union Intellectual Property Office published a notice regarding the effect of Brexit on EU trade marks and community designs.
The notice confirms that as of the date of withdrawal of the UK from the EU (expected to be 29 March 2019) and subject to any transitional arrangement* that may be agreed between the UK and the EU27 (remaining EU member states after the UK leaves), EU rules on EU trade marks and community designs will no longer apply to the UK**.
If the date of withdrawal is not extended and there are no transitional arrangements then as of that withdrawal date:
- registered EU trade marks, registered community designs and unregistered community designs would continue with effect in the EU 27 but not in the UK***
- pending EU trade mark and registered community design applications would not cover the UK
- seniority claims in EU trade marks based on UK national rights would cease to have effect in the EU27
- registered International trade marks (Madrid) and designs (Hague) designating the EU would continue with effect in the EU 27 but not in the UK***
What does this mean?
The ongoing Brexit negotiations create considerable uncertainty but there are several important factors that IP right holders should consider.
* The date of UK withdrawal may be extended. A transitional arrangement whereby the UK continues to implement EU rules may mean nothing changes beyond March 2019. The UK crashing out of the EU seems to be most unpalatable from all sides.
** The UK government has outlined that EU rules, including decisions of the CJEU, will be embodied in UK law.
*** It is widely expected that the UK will implement legislation such that existing EU trade marks and community designs will continue with effect in the UK through new national UK rights. Importantly the UK does not need approval from the EU and it is in the interests of the UK and business worldwide to do this.
Given these expectations our pragmatic advice remains that it is ‘business as usual’ and no immediate change to European trade mark and design filing strategies is required in the vast majority of cases until the outcome of the Brexit negotiations becomes clearer. However dual EU and UK filings should be considered to eliminate risk for those most important trade marks and designs.
The notice reminds right holders that ultimately for individuals and businesses based outside the EU27, their representatives will need to be qualified to act before the EUIPO. Withers & Rogers is a European firm of IP attorneys with offices in the UK and Germany who will continue to be able to act before the EUIPO post-Brexit, as well as having intimate knowledge of both EU and UK trade mark and designs law and practice, so is a one stop shop for UK and EU IP needs.
Richard Worthington
Advanced Engineering group
If you require further information on anything covered in this briefing, please contact Richard Worthington (rworthington@withersrogers.com; 44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, December 2017
