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EU IP protection in no-deal Brexit – IPO confirms practicalities

27 Mar 2019

Many businesses currently enjoy the benefits of EU registered IP rights that are protected in all EU member states, including the UK, through a single registration at the EU Intellectual Property Office (EU IPO) or World Intellectual Property Office. Approximately 1.7 million EU trade marks and registered Community designs are in force in the UK today; but what happens with these rights if the UK leaves the EU without a trade deal? 

Existing EU rights

Good news for businesses that hold EU trade marks and registered Community design rights: even if the UK leaves the EU without a deal, their current rights will automatically continue to be protected in the UK. EU trade marks and design rights will be converted into equivalent UK trade marks and UK registered design rights. The rights will basically turn into UK rights and will be treated as if they had been registered under UK law. The registrar of the UK IPO will notify right holders once the new UK right has been granted. There will be further guidance on the government website. 

There are some practical implications as the UK uses a different numbering system as the EU. The numbers of EU trade marks and design rights will receive new prefixes for use in the UK, and right holders need to get used to using different numbers for the same trade mark or design right depending on whether they refer to the right in the UK or in the EU. For instance, EU trade marks that are converted into UK trade marks will receive a new UK008 prefix, Community design rights will receive a prefix 9 for use in the UK and International design rights designating the EU will receive the prefix 8 for use in the UK. 

New trade mark and design right applications

Whilst existing rights are preserved, the process is not quite so straight forward for pending applications at the EU IPO at the point of Brexit. Businesses will have to refile all their ongoing applications to register trade marks or design rights with the UK IPO and bear the costs of the new filing. However, the UK will at least recognise filing dates of EU applications for up to nine months post-Brexit: this is crucial as once a trade mark is registered, the filing date is also the date from when protection starts. 

Protection within the 27 other EU member states

Current EU trade marks and registered Community design rights will continue to apply in the other EU member states without further action being required. The new provisions only apply to the protection and enforcement of EU trade marks in the UK. 
 
If you have any questions as to registration, protection or enforcement of your IP rights in the UK or in the EU with or without Brexit, please contact Beatrice Bass on Beatrice.Bass@dmhstallard.com or 01273 744240.

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