Government commits to 'cloning' EU trade marks and designs

25th Sep 2018

The UK Government committs to 'cloning' all EU trade marks and designs onto the UK registers on Brexit, even if there is no deal.

The UK Government has published its paper on trade marks and designs if there’s no Brexit deal.

In the paper, published on 24th September 2018, the UK Government committed to ‘cloning’ all existing European Union trade marks (EUTMs) and registered community designs (RCDs) onto the UK register. This will ensure continuation of protection in the UK post-Brexit.

Responding to the paper, CITMA President Tania Clark said: “We welcome the Government’s commitment to ensuring protection and enforceability of all EU registered trade marks and registered community designs in the UK post-Brexit. This will be welcome news for businesses.

“However, we firmly believe that the Government must change the rules on address for service in the UK if there is no deal, so rights holders need to provide a UK address for service. We do not see a justification for continuing to allow addresses for service in the EEA when the UK will cease to be a member of the EEA on Brexit.

“There are still several unanswered questions which the lack of clarity on raises risks for rights holders. The Government should urgently clarify these issues.

“The Government needs to also confirm that there will be no compulsory forms or fees for continued protection of registered trade marks and designs.

“The nine month window for applicants to refile EU trade mark applications in the UK will be a welcome relief to many businesses who have pending applications at the time of Brexit.

“On exhaustion, we welcome the commitment to allowing EEA imports into UK post Brexit and understand that any reciprocal agreement will need to be negotiated.

“We have concerns that design applicants may have lost their right to file if the registered community design application was more than 12 months old. And that there is a lack of clarity around continued protection for trade marks and designs filed through the Madrid Protocol and the Hague Agreement.

“We are surprised to see that there is no commitment to notifying applicants that stand to lose inclusion of UK coverage when their trade mark or design is registered, if this falls after Brexit.

“CITMA will continue to influence and help shape the debate on post-Brexit intellectual property.”