On March 29, 2017, the United Kingdom submitted a notification of its intention to withdraw from the European Union per Article 50 of the Treaty on European Union. After Brexit, set for March 29, 2019, 23.00 CET, the UK becomes a “third country”. All European trademarks registered as of the withdrawal date will not be protected in the UK regardless of whether they were filed before or after that date.
Unitary intellectual property rights
At present, there are only three IP rights with unitary effect across the EU, the EU Trade Mark (previously known as the Community Trade Mark), the Registered Community Design (RCD) and the Unregistered Community Design (UCD). All three are governed by the terms of their own EU Regulations, and the two registered rights are granted by and registered with the EU Intellectual Property Office (EU IPO, previously known as OHIM) in Alicante, Spain.
In addition, a package of EU Regulations and the Agreement on a Unified Patent Court entered into by 25 EU member states, (all except Poland, Croatia and Spain), together make provision for another unitary right, the “European Patent with Unitary Effect” or “Unitary Patent”.
Each unitary right is a single property right applying across all member states (or, in the case of the Unitary Patent, across those of the 25 signatory countries.
Under current EU laws none of these rights can cover a territory that is not an EU member state, and so after Brexit they will all cease to apply in the UK.
From the date of withdrawal, existing EU Trade Marks (EUTMs) and registered and unregistered Community designs will cease to apply in the UK. This means they will cease to provide protection within the UK, and so will no longer be infringed by acts carried out in the UK after the date of withdrawal. New and pending applications for EUTMs and registered Community designs (RCDs) will not apply in the UK when granted. Designs first made public in the UK after the date of withdrawal will no longer qualify the design for protection as an Unregistered Community Design.
To date no proposals have been published in this area, but whatever route is adopted a number of issues are expected to arise and a number of consequences will follow:
· There may be deadlines for conversion and there may be a charge for making the conversion.
· There is a question whether applicants for conversion will be able to rely on the priority date afforded by an existing unitary right or application.
· The new UK rights once granted are unlikely to enable the owner to oppose third party applications for similar EUTMs or RCDs.
· UK businesses with EUTMs may find their EUTMs are vulnerable if the business does not use the mark within any of the remaining EU member states. UK businesses which do not have a commercial or industrial establishment (e.g. an office or factory) in an EU country will need to appoint an EU representative to communicate on their behalf with the EU IPO regarding their EUTMs and RCDs.
EU trademarks are currently effective in all 28 member states of the EU. As part of the planned withdrawal of the United Kingdom from the EU, Union trademarks and Community Designs will no longer have any effect in UK after Brexit. In marked contrast, nothing will change for European patents.
The problem of the fate of EU trademarks for the UK has been recognized by the British Patent Office. It planned to install a mechanism to convert EU trademarks into British trademarks preserving the original priority date. However, at the moment, such regulations have not yet been adopted and it is not foreseeable whether the House of Commons will find the time until March 29 to pass the necessary legal provisions. In any case, the “deal” with the EU does not contain any such provisions. To ensure full coverage of the rights, Trade Mark owners should protect their trademarks in the UK by filing an independent national UK trademark before the Brexit.
The official costs of a trademark application in the UK would be £200.00 for the first class and £50.00 for each additional class.
John Lane
Managing partner
Holohan Lane Solicitors
