Welcome News for EU Trade Marks And Designs In The Event Of “No Deal” Between The EU And The UK

September 2018

The UK Government has announced how it plans to treat European Union (EU) trade mark and design rights in the event that the UK leaves the EU without a deal covering their future relationship.

Their technical notice stresses that a deal between the UK and EU is the more likely outcome, in which case agreed transitional provisions should take effect which keep the UK as part of the EU trade mark and design registration systems until 1 January 2021. However with a deal yet to be finalised, the UK government has set out its plans for a ‘no deal’ scenario.

Currently, EU trade marks and designs have effect in the UK because of the UK’s membership of the EU. However, the UK’s membership of the EU is due to end on 29th March 2019.

If there’s no deal

EU trade marks and designs that are registered and in force in the EU at 29 March 2019:
The UK Government will ensure all existing registered EU trade marks and registered Community designs will continue to be protected in the UK by providing equivalent trade mark or design protection in the UK.  Right holders would be notified that a new UK right has been automatically granted.

This new UK right will be provided with minimal administrative burden and it will be treated as if it had been applied for and registered under UK law.
The only difference in a no-deal scenario is that will happen by 29 March 2019, whereas if a deal is reached this will take effect from 1 January 2021.

EU trade marks and designs that are pending in the EU on or after 29 March 2019:
For EU trade mark and Community design applications which are pending at the date of the UK’s exit from the EU, it will be possible to refile the application at the UKIPO using the normal application process for registered trade marks and registered designs in the UK. 

For a period of nine months from exit, the UK Government will recognise filing dates and claims to earlier priority or UK seniority recorded on the corresponding EU application.  Right holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure.

HGF will notify all our clients with pending applications for an EU trade mark or a registered Community design in advance of 29 March 2019, for them to consider whether they wish to refile with the UKIPO to obtain protection in the UK.

Again, in a no-deal scenario this will happen from 29 March 2019, rather than from 1 January 2021 if a deal is reached.

Action to take 
These assurances by the UK Government suggest there is no strong need to file separate UK and EU design and trade mark applications at present, in the event of a deal or no-deal being reached between the UK and EU over the next few months. However, neither of these plans have been definitively agreed on yet.

As stated above, the UK Government’s aim is still to reach a Brexit deal which would mean the UK should remain part of the European Union design and trade mark systems until the end of a transition period on 1 January 2021, (see here for more background). 

It should become clear within the next few months whether a Brexit deal is to be reached which will dictate whether these plans are put into action on 29 March 2019 (no deal) or 1 January 2021 (deal). HGF continues to monitor the position very closely and will update you as soon as anything is decided or changes.

How HGF can help 
Irrespective of the final terms of Brexit, as a firm with offices in five European countries, HGF will continue to handle all EU and UK trade mark, design and other intellectual property matters after Brexit, as we do now. Should you have any questions arising from this notice, please contact your usual HGF attorney or email us at brexit@hgf.com.