March 22, 2019 – 7 DAYS TO BREXIT?: WHAT YOU SHOULD KNOW ABOUT YOUR EUTMs AND RCDs

BREXIT

On March 17, 2019, UK chancellor Philip Hammond said it is “physically impossible” for the UK to leave the European Union on the original March 29, 2019 Brexit date.

Given that eminent opinion and that the third attempt to vote “the Deal” was blocked by procedural matters, the UK will need an extension of time for the Brexit.

As a consequence, the Exit Day will be no longer on March 29, 2019 and no one knows when it will happen.

We should also consider that the UK Parliament has voted an explicit statement, by which a No Deal exit is refused.

In addition, an extension of time that Prime Minister Theresa May will have to ask the EU, shall be approved by a unanimous vote of all 27 member States.

However, it is likely that the “extension of time” will be granted for a short period and not beyond May 23, 2019 (the date of the EU Parliament election).

Indeed, it is very likely that one or more EU member States will raise objections to the UK participation to the EU parliament elections, after over 18 months of unsuccessful negotiations for the Brexit so far.

Let us consider, in this changing scenario, 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 and RCDesign registrations

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

When: – Should the “Withdrawal Agreement (hereinafter “Brexit Deal”) be accepted by the UK parliament, the new UK trademarks and UK designs will be created at the end of the Transition Period (at present, in lack of the Exit Day, this further date cannot be calculated).

Maybe, the Exit Day could happen on May 22, 2019.

Please consider that these are the provisions of the present Brexit Deal (refused twice by the UK parliament): it is possible that an amended Brexit Deal would be approved with different provisions.

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

Should  the Brexit Deal be approved, it is still unclear whether the owners will be notified (!) of their new rights being granted 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.

 

EU trademark 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: – Should the “Withdrawal Agreement (hereinafter “Brexit Deal”) be 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, in lack of the Exit Day, this further date cannot be calculated).

Maybe, the Exit Day could happen on May 22, 2019.

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

Should  the Brexit Deal be approved, it is still unclear whether the proprietors of the earlier EU rights will 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: what happens, given that the UK government will ask the EU for an extension of time; and that the March 29 cannot be the Brexit date?

Answer: the Exit Day will be postponed, at latest by May 22, 2019.

A further scenario, to be verified in the next months: if the UK will not be able to approve an agreement for Brexit, general elections could be called and the new government could consider renouncing to the Brexit or call for a Custom Union with the EU.

This will create other unpredictable legal consequences.

 

Recommendations.

Please, schedule a complete revision of your EU trademark and design portfolio; set a deadline on May 22, 2019, but be ready to shift it to another date, should an “extension of time” request be asked by the UK.

Keep your EUTMs and RCDs monitored, irrespective whether they are registered or just pending and, above all, stay tuned on the BBC World TV channel and keep yourself informed on the developments of the Brexit case.

We will keep you posted next week if the situation becomes clearer.

 

Francesco Bonini