Certainty In Uncertain Times?

No doubt about it, these are confusing times and you may still be wondering what will happen to your Patents or Trade Marks if there is a no deal Brexit on 31st October. For example, after all the votes and all the debates, has the position changed since no deal was last faced in March?

In short, the answer is no, although there is more certainty in that the legalisation implementing what will happen to affected IP has now been finalised.

Patents

Patents remain unaffected by any Brexit uncertainty. The UK’s exit from the EU will not affect the current European patent system, which is governed by the European Patent Convention rather than the EU. As such, whatever the outcome of Brexit, UK individuals and businesses will continue to be able to apply to the European Patent Office for patent protection and European patents will continue to apply to the UK. Existing European patents that have been pursued in the UK will also be unaffected.

Trade Marks

For Trade Marks the situation is different, so we thought it would be useful to focus on some certainty in these uncertain times.

What we can say for certain is that the following will come into effect, deal or no deal:-

1 – Owners of existing EU Trade Mark registrations and Community Design Registrations will be issued automatically and without charge by the UK Government, a comparable UK registration, mirroring the same details and dates;

2 – Owners of existing EU Trade Mark applications and Community Design applications will have a nine month period following Brexit (31 July 2020) to request a comparable UK application mirroring the same details as their EU applications, but will have to pay official fees;

3 – Comparable UK registrations due for renewal in the six month window after Brexit will still need to be renewed in the UK, even if the EU renewal was undertaken.

What actions should you take?

If you are launching a new product in the UK, there is some benefit to filing a separate UK trade mark application now, even if you file an EU TM application, as such an EU TM application filed now will not be registered by 31 October 2019. While a comparable application can be requested later, with the UK TM registration procedure being so quick, owners could potentially have a UK TM registered by November (again with the payment of the official fees). Design registration is a much faster process, being a deposit system, and therefore is less of an issue. You will of course need a separate UK and EU registration after Brexit for both your trademarks and designs.

.eu Domain names and Counterfeits

If you have registered a .eu domain name, check you/your business can still hold on to it after Brexit. It requires to be held by an EU individual or entity with an address in an EU member state. It has been agreed that a two month period to alter details will be allowed. Also, if counterfeits are an issue, and an EU wide customs application for action watch is in place, this will be affected and you should discuss options with your advisors.

And what if there is a deal?

The current proposed transition phase will commence, with the status quo remaining until 31 December 2020, and thereafter the above taking effect.

Helena Peat is a Trade Mark Attorney in Murgitroyd’s Newcastle Office. Murgitroyd has offices in the UK, France, Ireland, Finland, Germany, Italy and Switzerland, with established attorneys in place for many years, and can offer direct representation in 14 member states, providing certainty in uncertain times.