On the 5th February, The Chartered Institute of Trade Mark Attorneys (CITMA), provided updated guidance for trademark and design owners in light of the real prospect that the UK could leave the EU with no deal on 29th March, 2019.
Following conversations with the UKIPO, which has given assurances that it is ready to act to protect the rights of trademark and design owners should the UK leave the EU with no deal, CITMA has clarified the following:-
At 11pm on 29th March 2019, if there is no deal:-
1. All existing registered EU Trade Marks and Registered Community Designs will be granted an equivalent or “comparable” trademark or design registration in the UK. This will be an automatic procedure, which will not require payment of fees and will provide the rights holder with a ‘cloned’ registration. These cloned registrations will, however, need to be renewed in the UK at the relevant time.
2. The above provisions will apply to International trade mark and design registrations that are protected in the EU. However, the cloned registrations will become standalone national UK rights, rather than International rights designating the EU and the UK.
3. Pending applications for EU Trade Marks and Registered Community Designs will be granted a period of 9 months within which to re-file in the UK and pay the usual official fees. The UKIPO will recognise all filing dates and claims to earlier priority and UK seniority, which are claimed in connection with the corresponding EU application.
4. Pending International trade mark and design registrations designating the EU and those that have not been granted protection in the EU will also need to be re-filed with the UK IPO.
5. All unregistered design rights will automatically continue to be protected and enforceable in the UK for the remaining period of protection of the right. The government has committed to introducing equivalent protection in the UK through new legislation for all new designs.
It is worth noting that the above is applicable whether we leave the EU with or without a deal.
For full details on the advice and guidance from CITMA please read the full article here.