Brexit Updates

Franco de Barba
Trademark Attorney
MERX IP
fdebarba@merx-ip.com

As informed in previous post, the UK submitted on 29 march 2017 the notification of its intention to withdraw from the European Union pursuant to article 50 of the Treaty of the EU. The UK will become a third country to the EU, after the transitional period has lapsed, expiring on 29 march 2019.

The UK government White Paper of 12 July 2018 shows a willingness to maintain its intention to ensure that the European Union registered Trademarks and designs will continue to be protected and enforceable.

On 24 September 2018, the UKPTO published a letter explaining how a no deal BREXIT would affect EU trademarks and designs.

However, taking into account the current political scenario of uncertainty, we will have to see which would be conditions for the UKPTO to recognize the protection of existing EU IP rights in the UK.

Key points to note in the latest technical note of September 2018, include:

• The UK would ensure that the property rights in all existing registered European Union trademarks, registered community designs will continue to be protected and to be enforceable in the UK.
• UK would provide an equivalent granted trade mark or design registered in the UK that will come into force at the point of the UK exist from the EU.
• According to the technical letter of September 2018, the new UK right will be provided with minimal administrative burden. That appears to be a step back from the position of it being automatic and free, as stated months before by the UK authorities. Thus, there are doubts as to whether or not the recognition of protection of existing EU IP rights in the UK will be granted automatically and free of charges.
• Applicants with a pending application for an EU trade mark or EU Design at the point of exit will be able to refile, with nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes.
• The position remains wholly unclear as regards International registrations designating the EU under the Madrid and Hague Conventions. The technical note says that the UK is working, including with WIPO, to provide continued protection in the UK from March 2019 for IP rights filed though Madrid and Hague Systems, and designating the EU for protection.

It remains, tough, the responsibility of the UK government, to pass technical changes through statutory legislation in Parliament, over the coming months. Thus, despite these helpful confirmations there is also scope for uncertainty.