'Hard' Brexit? – What Happens To EU Trademarks And Community Designs?

Author:Mr Claus Eckhartt, Henning Hartwig, Philipe Kutschke and Alexander von Mühlendahl
Profession:Bardehle Pagenberg
 
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On March 29, 2019, the United Kingdom (UK) will leave the European Union (EU). If this should happen without an agreement, i.e. in case of a "hard Brexit", the situation of European Union trademarks and Community designs, currently protected also in the UK, will be as follows, according to information made available by the UK government:

Trademarks

Registered EU trademarks will continue to be protected in the UK as "comparable" trademarks. This effect will be automatic, without any application, and without any fees having to be paid. These rights will retain their respective priority and filing dates, as well as any UK seniority. These trademarks will eventually be entered on the register of the UK Intellectual Property Office (UKIPO). Trademarks registered under the Protocol to the Madrid Agreement and extended to the EU which have been accepted for protection by the European Union Intellectual Property Office (EUIPO) will also become "comparable" trademarks, as UK national trademarks, and not as UK extensions under the Madrid Protocol.

The term of protection for the resulting UK trademark registrations is the same as that of the original EU trademark or Madrid Protocol registration. Renewals will have to be effected at the UKIPO, according to the terms set by the UK.

Applications for the registration of EU trademarks pending on March 29, 2019, may be re-filed as UK applications, within a period of nine months from the Brexit date. Such applications will retain their EU filing, priority or seniority date. This applies also to trademarks registered under the Protocol to the Madrid Agreement and extended to the EU which have not been accepted for protection by the EUIPO prior to March 29, 2019.

Designs

Registered Community designs will continue to be protected in the UK as "re-registered" designs. This effect will be automatic, without any application, and without any fees having to be paid. These designs retain their EU priority or filing date. These rights will eventually be entered on the register of the UKIPO. Their term of protection will be the same as that of the original Community designs. They will have to be renewed at the UKIPO, according to the terms set by the UK. Designs registered under the Hague Agreement Concerning the International Registration of Industrial Designs and extended to the EU which have been accepted for protection by the EUIPO will also become "re-registered" designs, as UK national designs, and not as UK...

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