EU Trade Marks and Community Designs post-Brexit

On 5 December 2017, the EUIPO published a notice that as of Brexit withdrawal date (29 March 2019, subject to any extension), EU rules on EU Trade Marks (EUTMs) and Community Designs (CDs) will no longer apply to the UK.  Pending a long-term deal or transitional arrangements between the UK and EU27, the EUIPO states that this will result in the following:

1. EUTMs and CDs will cease to have effect in the UK (although as we explain below, in practice we expect existing EUTMs and CDs to continue to be recognised in the UK).
2. Pending applications will no longer extend to the UK.
3. Seniority claims based on UK national rights will cease to have effect in EU27 Member States.
4. EUTM designations from International Registrations will apply only to EU27 Member States.

What does this mean for rights holders?

This notice reinforces our view that your most important trade marks should be registered as UK national marks as well as EUTMs, especially those marks that are likely to be used for enforcement action in the UK. Having a national UK registration not only militates against the uncertainty posed by Brexit, it also provides additional enforcement-related benefits.

Nevertheless, the EUIPO’s notice does not (and cannot) address the firmly held view that rights currently protected under existing EUTMs and CDs will continue to enjoy protection in the UK through a newly created equivalent UK national right. This right has been described as a ‘novated right’ or a ‘child right’.  It is not within the EUIPO’s power to grant such a UK novated right, but it is well within the UK’s power.  The reason why so many believe that an equivalent UK novated right will be created is because otherwise the UK will be in breach of its obligations under the European Convention on Human Rights (in relation to the deprivation of property).  Furthermore, and as a practical matter, it would make the UK a deeply unattractive place to do business.  That is something the UK government cannot afford.

Although the EUIPO notice states that EU rules will no longer apply in the UK, it is also important to note that the general body of EU IP law is, including decisions of the CJEU, will be enshrined into UK law as ‘retained EU law’ on the date of the UK withdrawal’s from the EU.

The EUIPO’s notice also advises brand owners to ensure their representatives are qualified to act before the EUIPO in proceedings. As an international legal practice, with offices in multiple European jurisdictions staffed by lawyers qualified in the UK and in EU27 states, Osborne Clarke is the perfect choice for all your UK and EU27 IP requirements.

For more on the implications of Brexit for IP law see here, or visit our Brexit insights page.