What you need to know if the UK leaves the EU on 31 October 2019

We suspect that many of our readers may still be unsure as to what effect there will be on their IP rights if the UK leaves the EU at the end of October, pursuant to a ‘hard Brexit’.  In other words, if the UK leaves the EU without signing a withdrawal agreement with the EU (in which various transitional arrangements are set out) and instead we simply leave with ‘no deal’.

So, for our readers’ benefit, set out below are 10 key points of which to be aware.

1. If you own a registered EU trade mark (“EUTM”) or an International TM which designates the EU, you will automatically become the owner of a comparable UK registered trade mark. No forms will need to be completed and no fees will need to be paid to obtain the registration. The comparable UK registered trade mark will have the same filing date and any priority claim of the EUTM.
2. If you own a pending application for a registered EU TM (or an International TM which designates the EU) then you will have a 9 month period (i.e. until 31 July 2020) to file an application for a UK registered trade mark, claiming the earlier filing date and any priority claim of the corresponding EU TM application. The UKIPO’s standard application fees will need to be paid.
3. Post Brexit, the holders of any UK rights (e.g. a UK registered TM) will not be able to rely on them to oppose or invalidate an EUTM application or registration.
4. If you own a registered Community design (“RCD”) or an International design registration (filed via the Hague system and which designates the EU), you will automatically become the owner of a comparable UK registered design. No forms will need to be completed and no fees will need to be paid to obtain the registration. The UK registered design will have the same filing date and any priority claim as the RCD.
5. If you own a pending application for an RCD then you will have a 9 month period (i.e. until 31 July 2020) to file an application for a UK registered design, claiming the earlier filing date and any priority claim of the corresponding RCD. The UKIPO’s standard application fees will need to be paid.
6. Post Brexit, UK businesses will no longer benefit from EU unregistered Community design (“UCD”) protection for their designs. However, the government has announced that if a business first markets goods made to the design in the UK then they will obtain UK unregistered design protection which is equivalent in scope to an UCD (save that it will only cover the EU).
7. Most UK copyright law will not be affected by Brexit, as it is based on international treaties (e.g. the Berne and Rome Conventions), but some cross border mechanisms and arrangements will no longer apply (e.g. the portability of online content services for UK subscribers present temporarily in an EU member state).
8. UK businesses will no longer benefit from database right protection in the EU. However, they will still be able to qualify for database right protection in the UK.
9. UK and European patents (and pending patent applications) will not be affected by Brexit, as they are not governed by EU law.
10. If a product bearing a registered trade mark is first placed on the market in the UK with the trade mark owner’s consent, then if that product is subsequently marketed in the EU (e.g. France) the trade mark owner’s rights may not be exhausted. The person marketing the product in France may be at risk of being sued in France for registered trade mark infringement by the trade mark owner, if they did not consent to the product being sold in France.    

The above list is not exhaustive, but should provide our readers with a simple guide (and, hopefully, some comfort) should the UK leave the EU on 31 October without signing a withdrawal agreement.

For any more information please contact Carl Steele, Head of Trade Marks on: c.steele@ashfords.co.uk.