FAQs and Resources
We have put together some frequently asked questions and resources to help you navigate the world of Brexit-IP.
What date is Brexit day or when we will exit Europe?
This very much depends on whether there is a Brexit deal. If there is no Brexit deal then the UK will leave Europe on the 29th March 2019 with the plans put in place by the UK Government for EUTMs and RCDs coming into effect on that date. However should a Brexit deal be struck then there will be a further transition period running until December 2020. What happens after this date will be down to the agreement between the UK and the EU.
What are the differences between the withdrawal agreement that was approved by cabinet and the ‘no deal’ scenario for IP rights?
At this time we see no fundamental differences between the withdrawal agreement that was approved by cabinet on the 15th November and the provisions by the UK Government for a 'no deal'.
Will the UK continue to recognise existing EUTM and RCD registrations post Brexit?
Irrespective of whether there is a 'deal' or 'no deal' Brexit, holders of existing registered EUTMs and or RCDs will be granted an equivalent, cloned UK registration. This new right will come into effect the moment the UK leaves the EU.
What happens if my application for an EUTM or RCD is pending at the time the UK leaves the EU?
If your application is pending (i.e. not yet registered) at the time the UK exits the EU, you will be given 9 months within which to refile the application in the UK, retaining the EU filing date and any priority or seniority claim. The application will need to be refiled at the UK Intellectual Property Office and will involve payment of the usual official fees.
When will I need to file a UK trade mark application?
Whether or not you have an EUTM, if UK protection of your mark is business critical, we recommend filing a UK trade mark as soon as possible. Filing a UK trade mark is the only way to provide 100% certainty regardless of the Brexit deal outcome. If you have an existing registered EUTM, both the withdrawal agreement and guidance from the UKIPO in the event of a ‘deal’ or ‘no deal’ Brexit, provide for existing right-holders to be granted a separate, but equivalent UK right, at minimal cost and administrative burden. If you are likely to have a pending EUTM application on Brexit day, then you will be given 9 months to file an equivalent UK application.
With the prospect of ‘Brexit day’ being as early as 29th March 2019, if an EU application is unlikely to be registered before Brexit day, then both EU and UK applications should be filed now.
Can my business continue to rely on pan-EU IP rights such as EUTMs and RCDs for protection in the UK after Brexit?
If you have an existing EU registration, then you will be granted a comparable UK registration. A pending EUTM or RCD application will, however, need to be refiled in the UK within 9 months of the UK’s departure from the EU. After Brexit you will need to file a separate UK application, whether via the UK national office, or through the International system, as any EU application filed post-Brexit will no longer provide protection in the UK.
I have a UK trade mark registration that I have used to oppose EUTM applications in the past. Will I still be able to do this, or will I need to apply for an EUTM?
Post-Brexit your UK registration will only enable you to oppose later filed conflicting UK applications. However, if you do not trade in the remaining EU countries and have no intention of doing so, then it will not be necessary to oppose an EU application, as it will not have any effect in the UK. If, however, you do trade in the EU, or are intending to do so, then we recommend that you file EU applications for all relevant marks, as soon as possible. Your UK trade mark attorney will be able to do this on your behalf prior to Brexit. Most UK attorneys (including Vault IP) have a contingency plan post-Brexit and will, therefore, still be able to provide EU filing services.
I filed a trade mark via the Madrid (International Registration) System. Will I still have the same protection in the UK and EU post-Brexit, for both new and existing trade marks?
The IPO has confirmed, that even in the event of a ‘no deal’ Brexit it will ensure all existing International trade mark registrations that designate the EU will continue to apply in the UK. As with EU registrations, owners of International Registrations will be provided with a cloned registration, which will be a standalone UK right. An International Registration pending before the EUIPO at Brexit day will need to be refiled within a 9 month period.
For future registrations, as the UK is an independent signatory to the Madrid Protocol (e.g. not as part of the EU) the system of registering trade marks in multiple jurisdictions will remain the same. However, the UK will need to be designated separately from the EU post-Brexit.
Do I need to appoint an attorney in another EU country as a representative for my EUTMs and RCDs?
At the present time, UK Trade Mark Attorneys still have rights of representation before the EUIPO and can still file and prosecute your applications etc on your behalf. In the event that a deal is reached with the EU, the draft agreement allows for UK attorneys to be able to continue to represent their clients before the EUIPO until the end of the transitional period.
In the event of a 'no deal', or for any new filings after Brexit day, it is highly likely that UK attorneys will lose their rights of representation. This does not mean that you will need to find an attorney in another EU country, as many UK attorneys have provisions in place to deal with this issue.
In the case of Vault IP, we will be managing the situation regarding representation on behalf of our clients and will notify them accordingly. In addition, we have made arrangements to enable us to continue to manage the filing and prosecution of EUTMs and RCDs on behalf of our clients.
Will UK attorneys still be able to file EUTM applications and RCDs on my behalf after Brexit day?
It is unlikely that UK attorneys will be able to represent you before the EUIPO after Brexit. In the case of Vault IP, we have made arrangements to continue to be able to file and prosecute applications on your behalf.
This means that firms can still have the same safe pair of hands carrying out the prosecution and maintenance of applications/registrations with no difference in service. Our aim is that there will be no discernible difference in the fees paid after Brexit, than before.
I rely on unregistered Community design rights to protect my designs for surface decoration. Will I have the same protection in the UK after Brexit?
If you are currently reliant on an UCDs for your existing surface decoration, the UK government has confirmed that they will create a new unregistered design right in the UK, which will mirror the provisions of the UCD. This new right will be known as the ‘supplementary unregistered design right’ and will provide protection for surface decoration post-Brexit. However, if gaining protection in the UK is business critical we would recommend that a UK registered design is filed. In any event, this will provide longer term (25 years) and more robust protection than relying on unregistered rights.
I filed a Design under the Hague System. Will I still have the same protection in the UK and EU through the system post-Brexit, for both new and existing Designs?
The IPO has confirmed, that even in the event of a ‘no deal’ Brexit it will ensure all existing International design registrations that designate the EU will continue to apply in the UK. As with RCDs, owners of International design registrations covering the EU will be provided with a cloned registration, which will be a standalone UK right. Any pending applications on Brexit day will need to be refiled within a 9 month period.
For future registrations, as the UK is an independent signatory to the Hague Agreement (e.g. not as part of the EU) the system of registering designs in multiple jurisdictions will remain the same. However, the UK will need to be designated separately from the EU, post-Brexit.
Will the UK's membership of the European Patent Convention be affected?
It is important to note that the European Patent Convention is independent of the EU and the UK's membership is, therefore, unaffected. This means that your existing UK-based European patent attorney will still have the same ability and rights to file European patents and act before the EPO as they have now.
Will I need to patent my invention in both the UK and the EU?
No. There is currently no such thing as an "EU patent". A European patent is issued by the European Patent Office, which is nothing to do with the EU. The UK will remain a signatory to the European Patent Convention, and your UK-based European patent attorney can continue to act as before.
We've also put together some useful resources to help you.
Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community
The UK Government’s Guidance on designs and trade marks if there’s no Brexit deal
The UK Government’s Guidance on patents if there’s no Brexit deal
The UK Government’s Guidance on the exhaustion of intellectual property rights if there’s no Brexit deal
The Future Relationship between the United Kingdom and the European Union - HM Government, July 2018
Get in touch
If you have business critical rights and need to file applications in both the UK and EU or have any further questions, please get in touch to see how we can help you.