EUIPO information for EU rights holders is not the full story

EU rights holders may have seen the recently published, ‘Communication No. 2/2019 of the Executive Director of the Office of the EUIPO’, or the “Brexit Q & A” section on the EUIPO website, outlining what will happen to EU trade mark and design rights when the UK leaves the EU. From this published information they could be forgiven for believing that come ‘Brexit Day’ their current EU registrations will no longer cover the UK. However this is not the case.

Whilst the information provided is correct from an EU law perspective, what it does not include is how the UK is ensuring that EU holders do not lose any rights. Whilst an EUTM will no longer cover the UK as of Brexit day, EU rights holders should not worry about their rights in the UK. The UKIPO has confirmed that the law in the UK will be amended in order to ensure no loss of rights. In particular, the following will apply:

1. EU Registrations - Holders of EU registrations subsisting when the UK leaves the EU, will be granted a comparable UK right. This right will arise automatically and at no cost to the rights holder. The new right will, however, be subject to renewal in the UK at the appropriate time. Anyone who does not want a comparable UK right can file an opt out notice, in certain circumstances. The same applies to registered designs.

2. Pending EU Applications - If an application is pending before the EUIPO at the date of exit, it will be possible to re-file the application in the UK within 9 months of exit day, whilst retaining the filing date and any relevant priority or seniority date enjoyed by the EUTM application. The same applies to registered designs.

3. Conversion - It will still be possible to apply for conversion of an EU registration or application in the UK post Brexit, provided that the application for conversion is submitted within three months of the EU right ceasing to have effect. Where conversion takes place, the resulting national right will inherit the earlier filing/seniority and/or priority date held by the EU right.

4. Seniority claims - As of Brexit day, the concept of seniority will apply to the new UK comparable trade mark rights. As such, seniority claims based on UK registrations or International Registrations designating the UK, will be recognised. The new law will ensure that any seniority based on such UK rights, which have been recorded against the EUTM, will be retained by the comparable UK trade mark right. This will happen automatically.

If you have any concerns about your Intellectual Property rights, or those of your clients, in relation to Brexit, please do not hesitate to contact us on +44 121 296 9164 or hello@vault-ip.com