After the Rejection by a majority of the British Parliament of the Brexit agreement by Theresa May on January 15, and the confirmation by the British prime minister that the March 29 The United Kingdom's departure from the EU will take place regardless, and everything points to this departure occurring without an agreement, which in recent months has been referred to as a “Hard Brexit”.
Newspaper articles have mainly focused on covering those consequences of Brexit that affect issues of indisputable relevance and greater public interest, such as economic and financial relations with EU companies, the free movement of people, the export and import of goods, and the impact on stock markets.
Aside from all these consequences, in this article (and at the time of its publication), we ask ourselves: What will happen to European trademarks and registered Community designs after the United Kingdom leaves the European Union?
European trademark rights or Community design rights, registered with the European Union Intellectual Property Office (“EUIPO”), extend to the entire territory of the 28 (currently) EU countries. However, once the United Kingdom leaves the EU, the regulations relating to the European trademark and the Community design (respectively, Regulation on the European Union trademark y Regulation on Community designs).
The Agreement between the United Kingdom and the European Union of November 14, 2018, which was rejected by the British Parliament on January 15, provided for a “transition period” until at least December 31, 2020, in which European regulations would still apply to the United Kingdom.
However, given how quickly March 29 is approaching, it is likely that the UK will end up leaving the EU without reaching a new agreement. The consequences for European trademark and Community design rights vary depending on whether the UK leaves the EU with or without an agreement.
If an agreement is reached before March 29
We assume that the new agreement would likely include the same provisions regarding industrial property rights as the previous agreement that was rejected, since the main points of contention do not relate to trademarks and designs.
The rejected agreement provided that those European trademarks and Community designs registered and granted would obtain an equivalent right in the United Kingdom, automatically and without having to pay additional fees. This option would be available throughout the transition period covered by the agreement, i.e. until December 31, 2020. Considering that a European trademark takes around 4-5 months to be granted, if there are no oppositions or rejections, and that a Community design takes around 2 weeks, the situation does not seem worrying in terms of registration strategy if the United Kingdom leaves the EU with an agreement on these terms.
For those European trademarks and Community designs requested but not yet granted As of December 31, 2020, the rejected agreement provided for an additional period of nine months from December 31, 2020, during which a national registration could be requested in the United Kingdom (paying the usual fees) and the priority date of the European trademark or Community design concerned could be claimed.
If NO agreement is reached before March 29 (which seems most likely)
The UK government's provisions for a no-deal exit expressly state that the UK will recognize a right equivalent to the European trademark or Community design in its national territory, apparently under a “simple and minimal administrative burden” and without additional fees. However, if the UK fails to renegotiate and reach a new agreement with the EU before March 29, there will be no transition period until December 31, 2020, as referred to in the rejected agreement.
This means that, in order for a European trademark or Community design to have effect in the United Kingdom after March 29, the European trademark or Community design must be registered and granted on that date.
The owners of European trademark or Community design applications that have not been granted by that date will have a period of nine months from March 29 to apply for national registrations in the United Kingdom (paying the usual fees) and may claim the priority of the European trademark or Community design applied for.
In other words, the situation differs from that of an orderly exit in that, as there is no transition period until December 31, 2020, the key date is March 29, 2019.
In either case, the design or trademark “validated” in the United Kingdom will be treated as a separate file, and will therefore be subject to renewal with the national office separately from the renewal of the European trademark or design with the EUIPO.
These same provisions also apply to international trademarks designating the EU, applied for through the Madrid System.
The United Kingdom Intellectual Property Office (UKIPO) recently published official information on the outlook for the situation regarding trademarks and designs registered at European level once the United Kingdom leaves the European Union, if that departure occurs without an agreement. The text can be accessed at this link.
