Brexit : what future for your trademarks and designs ?
As you know, the date of October 31 for the United Kingdom leaving the European Union has been postponed to January 31, 2020.
In the event of a "No Deal", what would be the consequences for the owners of trademarks and designs filed / registered in the European Union ?
The WIPO and the UKPTO have already published notices providing for the continuation of rights in the United Kingdom. The situation differs according to whether it is an already registered title (1) or a title not yet registered on the date of Brexit (2).
1. Trademarks and Designs registered on the date of Brexit
Owners of European or international effective in the EU trademarks and designs registered before the date of the Brexit (i.e. for which a grant decision has been issued by the EUIPO before that date), will obtain an independent British title preserving acquired rights (filing date, priority date, seniority date for trademarks).
According to WIPO, the replacement should take place automatically and at no cost and will create an independent British title.
2. Trademarks and Designs filed but not registered yet on the date of Brexit
Owners of European or international effective in the EU trade marks and designs still under examination and not registered on the date of the Brexit (i.e. for which publication has not yet taken place and/or the grant decision has not yet been issued by the EUIPO before that date) will be able to maintain their already acquired rights by filing a new national application in the United Kingdom within 9 months as from the date of the Brexit. Again, LAVOIX will monitor this deadline and shall communicate with its clients in this respect.
The replacement fees should be equivalent to those for filing a national application in the United Kingdom.
Generally speaking, we are monitoring very closely these developments and will take all necessary measures and steps to ensure that our clients' rights are maintained in the United Kingdom.
At this stage, and for new applications that obviously cannot be registered by the Brexit, we reiterate our recommendation to proceed with separate trademark applications in the European Union on the one hand and in the United Kingdom on the other. The same applies, as a precaution, to designs, even if obtaining the title is, in principle and unless Office’s objections, faster.