Brexit certainty at last!

Brexit will finally happen today when the UK officially leaves the EU after 47 years.  However, as far as intellectual property rights are concerned, there will be no change immediately due to the implementation of the transitional period which will last until 31 December 2020.

The key date moving forward will be 31 December 2020, when things will change dramatically.  

At the end of the transitional period, the following will apply:

• EU registered trade marks and designs will be cloned into an equivalent UK registered right automatically. This extension will be free of charge with the new UK trade mark enjoying the same priority and seniority dates as the corresponding EU trade mark;  

• For any pending EU trade mark or design applications, the proprietor will be able to file an application in the UK within 9 months from the end of the transitional period to request an equivalent UK application, but there will be a fee payable. This UK application will be deemed to have the same filing and priority dates as the corresponding EU trade mark application;

• The substantive EU law will still apply in the UK until the UK amends it;

• With respect to Customs Notices to seize counterfeit products, Union Application for Action (AFA) granted via UK customs authorities will no longer be valid in the other 27 EU Member States. So, if a brand owner wants to continue to have customs enforcement in the remaining 27 EU Member States, it would need to file a new Union AFA with a customs authority in one of the remaining 27 EU Member States. Any Union AFA granted via one of the other 27 Member States' customs authorities covering the UK will no longer apply in the UK, and a separate UK AFA will need to be filed for protection in the UK.

As a European Union trade mark takes a minimum of approximately four months to be registered (assuming there are no oppositions or objections) it is probably advisable to file both a UK and EU trade mark for a new brand so that you can ensure that they are registered quickly. With EU registered designs, the process only takes a few days so there is no need to file separate applications at this stage.  

We are expecting a significant increase in the number of UK filings and thus oppositions as the UK Intellectual Property Office does not examine on relative grounds.  In the circumstances, we would advise clients to ensure that they have watch notices in place informing them of when identical or similar marks are filed in the UK.

If you have any queries regarding the impact of Brexit on your intellectual property rights or customs notices, please contact Charlene Nelson, Chartered Trade Mark Attorney, on 01392 685332 or [email protected].