October 2, 2018

As part of its planning for a no deal Brexit, the Government has been publishing Technical Notices across all sectors setting out information to allow businesses and citizens to understand what they would need to do in such a scenario.

On 24 September, the Government published a series of Technical Notices covering various aspects of intellectual property, including trade marks.

If there is no deal, the Government says that it will ensure that the property rights in all existing registered EU trade marks will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark registered in the UK. These trade marks will be treated as if they had been applied for and registered under UK law. This means that they:

• will be subject to renewal in the UK;
• can form the basis for proceedings before the UK Courts and the IPO; and
• can be assigned and licensed independently from the EU right.

Applicants whose EU trade mark applications are ongoing at the point of the UK’s exit from the EU will have a period of nine months from the date of exit to re-file with the IPO, under the same terms, for a UK equivalent right, retaining the date of the EU application for priority purposes and any claim to UK seniority, using the normal application process for registered trade marks in the UK. The usual UK fees will have to be paid.

As for trade marks filed through the Madrid system and which designate the EU, the Government says it “will work … to provide continued protection in the UK after March 2019”.

Implications

• existing EU registered trade marks will continue to be valid in the remaining EU Member States;
• New equivalent UK trade mark rights copied over from existing EU registered trade marks will be granted “with minimal administrative burden”;
• rights holders will be notified that a new UK right has been granted;
• provision will be made regarding the status of legal disputes involving EU trade marks that are ongoing before the UK courts and more information will be provided on this before the UK exits the EU;
• applicants with pending applications for an EU trade mark will not be notified and after exit will need to consider whether they re-file with the IPO (as set out above); and
• UK applicants, like EU and third country applicants, will continue to be able to apply for EU registered trade marks as they do currently.

In terms of correspondence addresses and confidentiality for UK trade marks, if there is no deal, there will be no immediate changes to the UK address for service and privilege rules. There will be no immediate implications for UK, EU or third country businesses. The current rules will remain in place at the point the UK exits the EU.

To access the Technical Notice in full, click here.