The politics around Brexit have become increasingly tumultuous in the past weeks and the UK leaving the EU on 31 October 2019 in a no-deal, or hard, Brexit, now appears to be a realistic possibility. While some preparation and planning for this will have already taken place, to ensure that businesses are ready to implement the final steps needed, we provide an up-to-date summary of the outcomes for rights owners in a no-deal scenario.

Practical Tips for IP Owners

  • There continues to be no need to re-file registered European trade marks (EUTMs) as new UK national applications. Use in the remaining EU27 within the five years prior to the date of exit will also support the validity of the newly created UK "clone" (see below).
  • Dual trade mark filings (UK and EU) are not legally required at this time and until 23:00 (UK time) on 31 October 2019. Owners of EUTMs which were filed prior to the date of exit will be able to retain their date of priority from the EUTM in the UK by one of two mechanisms: (1) EUTMs which are currently pending but which proceed to registration before the date of exit will automatically be cloned into UK registrations; (2) EUTMs which remain pending on the date of exit can be extended to separate corresponding UK applications retaining the date of priority from the EUTM application by filing an application in the UK during the 9-month period after the date of exit. However, it important to recall that all EUTM applications filed now will not achieve registration before 31 October 2019. Therefore, if protection in the UK is required, it is recommended that a corresponding UK application is filed now. Otherwise, a separate UK application would need to be applied for post-Brexit, incurring the same fees as a dual-filed UK application, and registration could potentially be delayed as a result of an overload on the UK IPO system in the period immediately after 31 October 2019. After 23:00 (UK time) on 31 October 2019 (unless the date of exit is delayed), a separate UK application will be required in order to obtain a priority date in the UK.
  • For EUTM applications which have already been filed and remain pending, we do not recommend re-filing now as new UK applications. Instead, we recommend waiting in order to take advantage of the 9-month period from 31 October 2019 during which applicants can re-file pending EUTMs as UK national marks, while retaining the priority date (including any seniority date for the UK). Note, the same costs would be incurred as if you were filing a national UK application and no automatic notifications will be issued to EUTM rights owners by either the UK IPO or EU IPO of the expiry of the 9-month period and potential loss of rights in the UK, so this will need to be monitored by EUTM rights owners or their representatives.
  • For EUTM designations under the Madrid system for international trade marks, the same recommendations apply. However, note that the corresponding UK cloned registration or actively applied for UK application will be national rights, not “cloned” EU designations.
  • Consider the impact on your administrative support functions of the "cloning" of new UK trade mark and design registrations. Records will need to be created and updated for any "cloned" trade marks to ensure proper tracking of renewals and other deadlines.
  • Under a no-deal, EUTM rights owners may opt out of "cloned" UK registrations. Consider now (in advance) whether you may wish to so in order to avoid unnecessary clutter of rights in the UK that are of no interest. Note, however, that it is anticipated opting out would incur an official fee, in which case it may be more cost effective to simply allow cloned UK registrations that are not of interest to lapse on renewal.
  • Review ongoing EU disputes that have a UK connection (e.g., EUTM oppositions with any UK prior rights, or infringement actions including UK activities or parties). As there are a number of complexities which may apply depending on the specific details of any particular dispute, individual strategies are likely to be needed.
  • Consider defensive filing strategies and ensure your strategy maximises the possible advantages from filing a EUTM, where no bona fide intention to use is required (unlike the UK). Under the UK national system, trade mark applications filed without a genuine intention to use are deemed filed in bad faith and invalid, so it will no longer be able to obtain protection in the UK for defensive filings.

Licences/Co-existence Agreements

  • Existing and future licence and co-existence agreements, brand-sharing agreements, etc., may include a definition of the territory which refers to the EU. Any new agreements that include a definition of the EU (e.g., as the territory) should be clear whether it is the EU as constituted at the date of the agreement or as constituted from time to time. Review significant existing IP agreements that refer to the EU as a territory.

Overview of IP Rights under a No-deal Brexit

Time frame

"Brexit "on 31 October 2019, with the post-Brexit regime applying as of 1 November 2019

Registered Trade marks & Designs

UK government will grant owners of registered European trade mark (EUTMs), Registered Community Designs (RCDs) a new UK equivalent right. In effect, a "clone" of the EUTM or RCD with no action necessary or cost incurred on the part of the holder.

The "cloned" rights will not be re-examined, will enjoy the priority date of EUTM (including any UK seniority claim for trade marks). Rights holders will have the option to opt out of this scheme, but this is likely to incur an official fee.

Existing EUTMs/RCDs will continue to be valid in EU27 only.
Nine-month "priority" period for owners of pending EUTM/RCD applications to apply in the UK for the same protection. These re-filed applications will retain the priority and seniority dates from the corresponding EU application.
For international trade mark registrations under the Madrid system designating the EU, a new UK equivalent right will be granted -- a "clone." However, this will be a national registration, not an IR designation.
* The UK has joined the "The Hague system" for designs: as of 13 June 2018 it is possible to designate the United Kingdom in an international design application at WIPO.
EU Trade mark Directive The UK has fully implemented the EU trade mark Directive into national UK trade mark law.
Exhaustion The UK will continue to recognise EEA exhaustion post-Brexit. The EU has made no equivalent statement and is not expected to. The UK position on exhaustion is also expected to be temporary.
Unregistered designs* * While there is a separate unregistered UK design right under the Copyright Design and Patents Act 1988, this is a different type of right to the unregistered Community Design right and UK currently has currently no equivalent unregistered design right.
Existing unregistered Community Design rights will continue to be protected and enforceable in the UK for a term of protection at least equal to the remaining period of protection of the relevant Community right.
Creation of a new UK "supplementary unregistered design right" which mirrors the characteristics of the unregistered Community Design. Supplementary unregistered design rights disclosed in the UK after exit day will be protected in the UK (not the EU).
Geographical indications (GIs) A new UK GI scheme, which will be established, "broadly mirror the EU regime and be no more burdensome to producers."
UK will no longer be required to recognise EU GI status and EU producers would be able to apply for UK GI status. To protect UK GIs in the EU, it would be necessary to file an applications on a third-country basis.
 Patents * UK national patents and European patents -- via the European Patent Office -- are unaffected by Brexit since they are independent from EU membership.
SPC* * Supplementary protection certificates (SPCs) are a specific part of UK patent law that comes from EU law.
Granted SPCs (in force or not) will remain in effect in the UK after exit day. SPCs granted but not yet in force will come into force at the end of the associated patent term as normal. There will be no need to refile a pending SPC application at the IPO. However, most recent guidance by the UK government (April 2019) indicates that where authorisation was granted by the European Medicines Agency, SPC holders may be asked to provide information on the equivalent UK authorisation in order to be registered on the UKIPO's Patent Register.  Notably, the term of any new UK SPC will be calculated based on the earlier of a UK or EU Marketing Authorisation.
UPC UK will explore whether it would be possible to remain within the UPC and UP system, but if the UK needs to withdraw from the system, it will ensure that UP protection in the UK is replaced by “continued protection in the UK.”
Copyright International treaties on copyright will ensure that the scope of protection granted: (a) in the UK to copyright works created and/or owned by all foreign nationals and companies; and (b) in the EU to copyright works created and/or owned by UK nationals and companies, will remain largely unchanged. It is unclear whether the UK will voluntarily implement (aspects of) the controversial EU Copyright Directive.
Sui Generis Database rights* *Sui generis database rights are a EU law creation, and post-Brexit a database created in the UK would no longer be protected.
Trade Secrets UK originating sui generis database rights will no longer be enforceable in the EEA.
The UK has implemented the EU Trade Secrets Directive.
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