Brexit - what happens next?

9th Jan 2020

What is now likely to happen to registered EU Trade Marks and Registered Community Designs, and rights of representation for UK professional representatives before the EUIPO? (UPDATED 28th January 2020)

Brexit

After much political wrangling it is expected that the UK will be leaving the EU on 31st January 2020, followed by a transition period during which the status quo is mainatined. 

Assuming that the Withdrawal Agreement passes through the UK Parliament and is ratified by the European Parliament the UK will be entering a transition period. 

We wanted to clarify and set out what is now likely to happen regarding registered EU Trade Marks and Registered Community Designs, and rights of representation for UK professional representatives before the EUIPO. 

When will the UK leave the EU?

‘Brexit Day’ is 31st January 2020. However as per the Withdrawal Agreement, which is set to be approved this month, there will be a transition period until 31st December 2020 – during this time the UK will be treated like a member state. 

The Withdrawal Agreement states that during the transition period EU law applies in the UK until the end of the transition period (articles 126-127).

During the transition period the UK and EU are likely to be negotiating a future trading agreement. At this stage it appears unlikely that the transition will be extended, therefore in this scenario the UK would exit the EU at the end of the transition period without a trade deal in place if no agreement is reached. 

When will UK equivalents of EU trade marks and Community designs be created?

It has been confirmed by the UK Intellectual Property Office (UK IPO), provided the Withdrawal Agreement is ratified, that the creation of UK equivalent EU Trade Marks and Registered Community Designs will happen at the end of the transition period – 31st December 2020, not at the end of January 2020. 

The UK IPO had been ready to clone EU registered rights in the event of a ‘no-deal’ Brexit, but, provided the Withdrawal Agreement is ratified, this will now take place at the end of the transition, as the UK will enter a transition period as per the deal. 

These equivalent rights will be provided free of charge with the same priority and seniority.  

What happens to EU registrations made between 31st January – 31st December 2020?

It is stated in Article 54 of the Withdrawal Agreement, that holders of rights registered or granted before the end of the transition period will be awarded equivalent rights. So, it is at the end of the transition period where the cut-off will be. 

What will happen to Unregistered Community Designs (UCDs)?

Please see the quick reference guide we published on designs post-Brexit.

Will seniority claims also be cloned and/or are we able to reinstate an expired UK seniority right?

Seniority will be respected within the cloned UK registration. The cloned UK registration “comparable trade mark (EU)” will be deemed to have the same rights as if the senior mark had continued to be registered in respect of all the goods or services for which it was registered prior to the surrender or lapse.  

Will Madrid and Hague rights that cover the EU be added the UK register?

Yes. There is provision for the re-registration of all international registrations as UK rights at the end of the transition period. 

Will there be an opt-out for rights holders?

If holders of EUTMs and RCDs wish to opt-out of having a UK equivalent right created they will be able to do so – the UK IPO will advise on the process for doing this. 

Do holders of EU rights need to appoint a UK representative? 

Not for the first three years after the end of the transition period according to the Withdrawal Agreement

What is happening to Geographical Indications (GIs)? (UPDATED 28th January 2020)

In the event of a no-deal, then it had been planned that the 88 UK-based GIs would immediately be brought onto the new UK register; holders of EU GIs would not automatically be brought onto the UK register but would have a nine-month priority window to file. 
 
However, now that the Withdrawal Agreement is becoming law, the position is as follows: under the Withdrawal Act, all will remain as at present through the transitional period, with continuing protection conferred by the EU GI system.  At the end of the transition period (31st December 2020), all existing EUGIs will continue to be protected under UK schemes, with equivalent protection – unless and until a subsequent agreement comes into force.

DEFRA will be responsible for GIs. 

When will UK representatives lose rights of representation before the EUIPO if a deal which allows for the retention of EUIPO representation rights is not reached?

Currently this will be at the end of the transition period. During the transition period, the UK is treated like a member state. 

The official communication from EUIPO Executive Director Christian Archambeau sets out what would happen if no deal was reached - we await updated clarification from the EUIPO.  

Can UK representatives apply for exemptions to remain on EUIPO register?

Please refer to the EUIPO guidance we published in May last year

Can UK representatives continue ongoing proceedings? 

Article 97 of the Withdrawal Agreement states: “Where, before the end of the transition period, a person who is authorised to represent a natural or legal person before the European Union Intellectual Property Office in accordance with Union law was representing a party in a procedure brought before that Office, that representative may continue to represent that party in that procedure. This right shall apply to all stages of the procedure before that Office.”

“When representing a party before the European Union Intellectual Property Office in the proceedings referred to in the first subparagraph, such representative shall in every respect be treated as a professional representative authorised to represent a natural or legal person before the European Union Intellectual Property Office in accordance with Union law.”

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