With the potential Brexit deadline of 31 October 2019 creeping up on us, now is probably the time to give consideration as to how best file UK and EU trade mark and design registrations.
Post-Brexit, EU registrations will no longer cover the UK. However, as we have previously advised, the UK has committed to automatically granting all EU rights holders with a comparable UK right. Where the application is still pending on Brexit day however, it will need to be refiled in the UK within 9 months of the UK’s departure if it is to retain the filing date and any priority / seniority date of the EU application.
In short, on the 31 October 2019, any EU applications filed now will be still pending and refiling in the UK will be necessary.
To date, we have not been actively encouraging clients to file separate UK and EU applications because EU applications would have been registered by 31 October 2019. Given that this deadline is now around a month away, we are recommending that both EU and UK trade marks and designs are filed in parallel. This is because:
1. A UK application filed now is likely to be registered within the next 4 months, i.e. by January / February 2020. If UK protection is sought via a newly filed EU application, this is likely to take longer, particularly if filed after the 31 October 2019.
2. If earlier conflicting marks are raised in the examination report issued by the UKIPO, they currently only notify the owners of earlier conflicting UK marks. As such, no notification is sent to the owners of earlier EU rights. However, as all EU rights holders will be granted a comparable UK registration, then the owners of EU registrations post-Brexit will be notified of any conflicting applications, via their new comparable UK right. This means that more notifications will be sent and that the likelihood of oppositions being encountered post-Brexit will increase.
If you’d like to talk to us about the best filing strategy for your firm or client, please contact us on +44 121 296 9164 or email@example.com.