13 March 2019 -15 DAYS TO BREXIT: WHAT YOU SHOULD KNOW ABOUT YOUR EUTMs AND RCDs

15 DAYS TO BREXIT: WHAT YOU SHOULD KNOW ABOUT YOUR EUTMs AND RCDs

As you are aware, the United Kingdom has declared that on 29 March 2019, it will leave the European Union.

But what are the consequences for the owners of a EU trademark or of a Registered Community Design?

The main difference is between registration and application of both .

 

EU trademark registrations and RCDesign registrations

What (happens) : New UK trademarks and new RCDesigns will be created automatically.

When: – if the “Withdrawal Agreement (hereinafter “Brexit Deal”) is accepted by the UK parliament, the new UK trademarks and UK designs will be created at the end of the Transition Period (at present, ending the 31 December 2020).

If there is No Deal, these rights will be created at the Exit Day (29 March 2019).

How: they are created automatically and no fees are due.

  • If there is the Brexit Deal, it is unclear whether the proprietors will be notified (!) of their new rights being granted in the UK.
  • If there is No Deal, the UK IPO will publish a notification (!!) of the new UK granted rights.

How long: the new UK rights will have the same duration, priority date (if any), application date, seniority (if any), registration and renewal dates as the corresponding EU rights.

 

EU trademark applications and RCDesign applications

What (happens): the owners will have to re-file fresh UK trademarks and fresh  UK Designs, (bearing the same filing date, priority, seniority date as the corresponding EUTM application or RCD application)

When: – if the “Withdrawal Agreement (hereinafter “Brexit Deal”) is accepted by the UK parliament, the new UK trademarks and UK designs will have to be filed within 9 months from the end of the Transition Period (at present, ending the 30 September 2021).

If there is No Deal, these applications will have to be filed within 9 months from the Exit Day (29 March 2019).

How: they corresponding UK rights will come from new applications and the corresponding UK fees shall be paid.

  • If there is the Brexit Deal, it is unclear whether the proprietors of the earlier EU rights will be notified (!!) of the need to re-file in the UK.
  • If there is No Deal, the owners will not be notified of the need to re-file in the UK.

How long: the new UK rights will have the same duration, priority date (if any), application date, seniority (if any), registration and renewal dates as the corresponding EU rights.

Questions and answers.

The basic question is: given the UK uncertain political situation, what happens, if the UK parliament asks the EU for an extension of time to reach an agreement?

Answer: in this case, it is likely that also the Exit Day  will be postponed.

Recommendations: please, schedule a complete revision of your EU trademark and design portfolio; set a deadline on the 29 march 2019, but be prompt to shift it to another date, should an “extension of time” request be asked by the UK.

Keep your EUTMs and RCDs monitored, irrespective they are registered or just pending and,

Above all, stay tuned on the BBC World TV channel and keep yourself informed on the development of the Brexit case.

See you next week and let us take a look if the situation becomes clearer.

 

Francesco Bonini