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Brexit, trade marks and issues to consider (part 1)

Written by Samuel O'Toole on 06 March 2019

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29th of March is a monumental day in history for many reasons, for starters on this date in 363 Roman Emperor Julian defeated the Sasanian army in the Battle of Ctesiphon, in 1999 the Discovery Space Shuttle completed its first docking with the International Space Station and this year, 2019, the UK will leave the EU. Whilst trade marks were not in the minds of Roman Emperor Julian and the astronauts in the International Space Station they are on our mind at Lawdit.

A key fact about Brexit is that once the UK is no longer a member of the EU, the EU Trade Mark Regulations (EU) 2017/1001 and EU trade marks (EUTM) will not provide protection in the UK.

The European Commission has announced an agreement in principle, the draft withdrawal agreement, and Title IV deals with trade marks. The draft agreement provides for a transition period until 31 December 2020 and it on this date that the holders of a EUTM will be granted an equivalent UK right (at no cost). It should be noted that if the UK crashes out of the EU with no deal, the UK Government has confirmed this position in its guidance published 24 September 2018. The Government’s guidance explains that the equivalent right will be provided for in a new Schedule 2A to the Trade Marks Act 1994 (TMA 1994).

Of course this opens up a potential for gaps in protection if all does not go to plan. All being well the Trade Marks (Amendment etc) (EU Exit) Regulations 2019 (UK TM Exit Regulations) should have holders of EUTMs covered, in that it provides for EUTMs registered immediately before exit day are to be treated as if they were a trade mark applied for under the TMA 1994.  

Holders of a EUTM will even be able to predict their registration numbers, the UK Intellectual Property Office has recently provided guidance as to the allocation of registration numbers. In essence the EUTM’s registration number will be prefixed with ‘UK009’.

Further, it would appear that the European Commission is still doing us favours. In its position paper transmitted to EU27 on intellectual property rights (including geographical indications) dated 6 September 2017 it was suggested that the entry of EUTMs onto the UK trade mark registers should not result in costs for the EUTM holders, the draft withdrawal agreement (Article 55) and the UK TM Exit Regulations both confirm this position. So whilst there will not be any direct administration re-filing fees, those with a vast trade mark portfolio are likely to incur expense in organising the newly acquired rights.

It would therefore be advisable for those with filed and pending EUTMs to do all within their powers to obtain registration before exit day to make use of the aforementioned provisions.

As at the time of writing, there are 23 days and 13 hours to go until Brexit this article is part one of many but feel free to contact Lawdit to discuss all things intellectual property and Brexit.

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