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Trademarks and a no-deal Brexit

March 2019. As the threat of a no-deal Brexit looms ever larger, the UK government has issued new and important guidelines for owners of European trademarks. So what happens if there’s no deal by 29 March this year? Chiever sets out the main issues.

EU TRADEMARKS AND DESIGNS REGISTERED BEFORE 29 MARCH

According to the regulations, owners of fully registered EU trademarks or designs will automatically be granted a registered trademark or design right in the UK after 29 March, comparable to their existing EU right and without any loss of priority, filing or seniority date. No registration costs will be charged.

The renewal date for the new UK rights will be the same as that of the existing EU rights. The UK trademark will also be given the same number as the EU registration, except that the UK version will start with the letter-number combination ‘UK009’.

Anyone not interested in obtaining a new UK trademark right alongside their EU trademark will be allowed to opt out.

Essentially, then, if you have an existing EU trademark or design registration, you need take no action, even in the event of a no-deal.

EU TRADEMARKS AND DESIGN REGISTRATIONS THAT MUST BE RENEWED (SHORTLY) AFTER 29 MARCH

There’s no point in applying for an early renewal for European trademarks with a renewal date that falls (shortly) after 29 March 2019. If the renewal date is after 29 March 2019, then the equivalent new UK rights will always have to be renewed separately (and the relevant renewal costs paid). So applying for early renewal of your EU trademark or design won’t save you any money.

EU TRADEMARKS STILL PENDING ON 29 MARCH 2019

Trademark and design applications that are still awaiting registration in the EU by 29 March will have to be submitted for separate registration in the UK, upon payment of the associated costs, if they are to continue being protected there.
New UK applications submitted within nine months of 29 March 2019 (in other words, by 29 December 2019) will be given the date of the previous EU application.

NEW APPLICATIONS: APPLY TO REGISTER A UK TRADEMARK NOW?

European trademark applications submitted now obviously won’t be registered by 29 March, which is why many companies are also opting to submit an application in the UK now. That isn’t really necessary, though, since new UK trademark rights can still be applied for up to 29 December 2019, and the date of the original EU trademark will be retained.

EU OPPOSITIONS AND CANCELLATIONS

EU opposition or cancellation decisions issued after 29 March will no longer apply to the UK. Anyone wanting to appeal against a new comparable UK trademark right will have to institute separate proceedings.

If you need more information, please feel free to contact Chiever.

Update March 22: EU leaders agreed that the UK could have an unconditional extension until 12 April, and a further extension until 22 May, if MP’s approved the withdrawal agreement next week.

Photo’s: Shutterstock, ChirlJon Visual Hunt en Pexels