2019-03-26:

We have earlier informed on our website about the different proposals concerning Brexit and IP rights, mainly regarding trademarks and designs. At the previous week’s meeting in Brussels, the EU and the UK agreed to extend the previously declared withdrawal date of March, 29. Two new potential withdrawal dates has therefore been declared – April 12, 2019 or May 22, 2019. If the UK Parliament approves the agreement in accordance with the model negotiated by Theresa Mays Government, the UK will leave the EU with a deal on May 22. If, however, Mays’ agreement is not approved by the Parliament, the UK government has a deadline to notify the EU of what they want to do next. UK can then announce they will leave the EU without an agreement (hard Brexit), or seek further extension of the withdrawal deadline. Hence, the dates of interest are currently April 12 (or later) for a hard Brexit, “No deal”, and December 31, 2020 (or later) for the transition period if an agreement is to be made according to the model the Government of Theresa May has negotiated.

However, the two alternative scenarios above will not constitute any significant differences for trademarks and design rights.

This is what we know at the present time:

EU trademarks – if withdrawal deal is made
– New national UK rights will automatically arise from the EUTMs before the end of the agreed transition period (December 31, 2020 or later), without incurring fees.
– The dates of priority, filing, seniority and renewal will be the same for the new national marks as for their corresponding EUTMs.
– It is still not clear if trademark holders will be informed of their new rights being granted or not.
– If genuine in use in the remaining EU member states has been recognized before the end of the transition period this will support the legitimacy of the corresponding UK trademark right
– If an EUTM is cancelled due to a cancellation procedure that begun before the end of the transition period, the corresponding UK right will be cancelled as well if the grounds of cancellation also applies to the UK.
– Holders of ongoing EUTM applications will have up to nine months after the end of the transition period (the end of September 2021) to file a corresponding UK national application and pay standard application fees. The national application will have the same application, priority and seniority date as the EUTM application. The applicant will not be informed of the necessity of also filing a national application. BRANN clients will be informed of this.

EU trademarks – in case of no-deal
– New national UK rights will automatically arise from the EUTMs on April 12 (or later), 2019 without incurring fees.
– The dates of priority, filing, seniority and renewal will be the same for the new national marks as for their corresponding EUTMs.
– Trademark holders will be informed and may choose not to gain a new UK trademark registration (e.g. in case of non-use).
– If genuine use in the remaining EU member states has been confirmed before the exit day this will support the legitimacy of the corresponding UK trademark right.
– The British court may cancel a UK right if the corresponding EUTM is cancelled in a pending UK proceeding.
– Holders of ongoing EUTM applications will have up to nine months after the exit date (April 12 or later) to file a corresponding UK national application and pay standard application fees. The national application will have the same application, priority and seniority date as the EUTM application. The applicant will not be informed of the necessity of also filing a national application. BRANN clients will be informed of this.

Registered EU designs (RCD) – if deal is made
– Already registered RCDs will automatically, without incurring fees, become corresponding national UK rights before the end of the agreed transition period, with the same application, priority and renewal day as the corresponding EU right. It is still unclear whether the right holders will be informed of this or not.
– The national right will be valid for the same time period the corresponding RCD is valid.
– If a RCD is cancelled due to a cancellation procedure that begun before the end of the transition period, the corresponding UK right will be cancelled as well if the grounds of cancellation also apply to the UK.
– Holders of ongoing RCD applications will have up to nine months after the end of the transition period (the end of September 2021) to file a corresponding UK national application and pay a standard application fee. The national application will have the same application and priority date as the RCD application. The applicant will not be informed of the necessity of also filing a national application. BRANN clients will be informed of this.

Registered EU designs – in case of no-deal
– Already registered RCDs will, without any incurring fees, become comparable national UK rights by the day of exit and will have the same application, priority and renewal day as the RCD and will probably be valid for the same period as the RCD as well.
– Right holders will be informed of this and may choose not to gain this new UK right.

– Holders of ongoing RCD applications will have up to nine months after the exit day (April 12 or later) to file a corresponding UK national application and pay a standard application fee. The national application will have the same application and priority date as the RCD application. The applicant will not be informed of the necessity of also filing a national application. BRANN clients will be informed of this.

Unregistered EU designs – if deal is made
– Unregistered EU designs will automatically be transformed into corresponding national UK rights at the end of the transition period. The national right will be valid for the same time period the corresponding EU right is valid.

Unregistered EU designs – in case of no-deal
– Unregistered EU designs will automatically be transformed into corresponding national UK rights on the exit day (April 12, or later). The national right will be valid for the same time period as the corresponding EU right is valid.
– The UK will implement regulations regarding a corresponding national protection for unregistered designs.

International trademark or design registrations – if deal is made
– The UK will make sure international registrations designating the EU will have continued protection in the UK.

International trademark or design registrations – in case of no-deal
– An international registration designating the EU will in the UK be transformed into a national registration.