Necessary steps – Great Britain, United Kingdom, England, Ireland
The impact of a hard Brexit is described in the Notice of the EU Commission (Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs) of 22.1.2018: The United Kingdom will become a third country from the date of its departure (30.3.2019), and all EU trademarks and designs will no longer apply to it.
On 1.2.2019, the Government of the United Kingdom published the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (Draft) http://tinyurl.com/y48kqw7x) by which an additional unregistered design right and, at the same time, automatic corresponding rights are granted for the United Kingdom.
In addition, the UK Government has envisaged that statutory regulations will be made by which EU trademarks and designs will all be automatically “cloned” in the UK trademark registry on March 29, 2019, at no cost.
This is regulated in Article 54 of the abovenamed draft, which states that : „the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council1 shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services”.
Note: So far, however, such a scheme has not been released. In the case of a hard Brexit EU trade marks provide rights only for the EU and will lose them for Great Britain. The United Kingdom Intellectual Proerty Office (UKIPO) seeks to ensure that EU trademarks will continue to enjoy trademark protection in the United Kingdom after the date of withdrawal. However, the Parliament has not approved this rule.
Holders of EU trademarks and / or designs who are based in the UK must appoint an accredited representative before the EUIPO for post-departure procedures. We as lawyers in Wels can assist you with such tasks.
Dr. Christopher Straberger has been admitted to the EUIPO (European Union Intellectual Property Office) for many years as a European Trademark and Design Attorney
In addition, owners of EU trademarks may consider as a precaution – for existing and also parallel to future EU trademark applications – to register trade marks in the UK (the same applies to EU designs). If the EU trade mark is not older than 6 months, the priority of the EU trade mark can also be claimed. This additional application for the United Kingdom can easily be done by means of international registration. We will be happy to assist you if you have questions.