Tuesday, 5th March, 2019

Brexit: An update for owners of EU trade marks and designs in the event of a no deal situation

The UK Government has released drafts of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2018 and The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019. These regulations are expected to come into force on 29 March 2019 (exit day) in the event that no deal is reached nor an extension of exit day obtained.

Reassuringly, the draft regulations confirm the UK government guidance to date (for a summary of this, see our earlier article) and include provisions to ensure owners of EU trade mark and design rights are protected in the UK in the ever increasing likelihood of a no deal situation. We summarise the key points below.

EU trade mark and design registrations

  • All EU registered trade marks and designs, as at exit day, will be ‘cloned’ into an equivalent UK registration at no cost. Owners will be notified of this new right.

  • There will be an opt-out process for any EU rights owner that does not wish to have a cloned UK registration. But this will only be possible if the trade mark is not in use in the UK. Owners may wish to opt out, for example, if they have a co-existence agreement in place where they have agreed not to register a trade mark in the UK.

  • The cloned UK trade mark or design will have a prefix added to its EU number to show it is a ‘cloned’ registration. This is proposed to look something like the following:

Existing EU trade mark  

Cloned UK trade mark

000025197

UK00900025197

017867542

UK00917867542

  • The new UK registration will need to be renewed separately from the EU registration if the renewal date falls after exit day. The United Kingdom Intellectual Property Office (UKIPO) will send renewal reminders to trade mark owners for any cloned registrations where renewal is due within six months of the cloned registration being created. The UKIPO will also waive any late fees for renewal of a cloned registration in the first six months as the cloned right did not exist to renew early.

  • Use of a ‘cloned’ mark in the EU in the five years prior to exit day will support the validity of the cloned UK registration. But from exit day, use in the UK will be required. So, for example, if you are only using the mark in France and Belgium, then in five years, the cloned UK registration will become vulnerable to revocation for non-use.

EU trade mark and design applications

  • Owners of EU pending trade mark and design applications will need to re-file in the UK (and presumably pay the associated application fees).

  • Owners will have nine months from exit day to do this and claim the same filing, priority and seniority dates from their EU application.

  • Owners will not be notified of this by the UKIPO, so proactive identification of these rights will be needed.

We are actively monitoring the ever-changing Brexit situation and will keep you updated on developments as they occur. If you have any questions or concerns regarding your EU or UK IP rights, please contact us.