UKIPO Issues Guidance on EU Trade Marks under "No Deal" Brexit

As we wait for the outcome of the world's biggest game of Deal or No Deal, the UK Intellectual Property Office (UKIPO) has issued a Guidance Statement on the status of European Union Trade Marks in the event of a “No Deal” exit.

The pre-Brexit Position

Currently EU Trade Marks are recognised and protected under UK trade mark law.

However, once the UK formally leaves the EU, legislative amendments will need to be made to handle treatment of EU trade marks within the UK. There has been uncertainty as to the specific arrangements in place, especially if Brexit negotiations result in a No Deal scenario.

UKIPO’s Guidance Statement

The UKIPO released a technical guidance statement on 1 March 2019 addressing the legislative changes to be implemented in the UK in the event of a No Deal exit.

They key takeaways from the Guidance are:

1. Existing registered EU Trade Mark holders will be granted a corresponding UK registration at no cost.
2. Applicants for pending (but not yet registered) EU Trade Marks will NOT be granted automatic protection in the UK. A 9-month grace period will be allowed for EU trade mark applicants to apply (with cost) for UK protection.
3. Corresponding UK registrations will be independent of their EU trade mark counterparts, including independent licensing, assignment, enforcement and renewal processes.
4. There is no specific guidance on the administrative treatment of Madrid Protocol International Registrations that designate the EU.

WIPO releases guidelines for impact on Madrid Protocol International Registrations

On 22 March 2019, the World Intellectual Property Organisation (WIPO) released an Information Statement outlining the potential impacts of a ‘No-Deal’ Brexit for Madrid Protocol International Registrations.

Under the guidelines, trade marks subject to an EU designation under the Madrid Protocol would be granted independent UK registrations in a similar process to the proposal adopted for native EU trade marks.

However, the created UK registrations would be separate from the Madrid Protocol International Registration system, and thus would need to be maintained and renewed independently.

It is proposed that International Registration holders may be able to apply to bring the UK under their existing International Registration through the Subsequent Designation process.

3. In general terms, the solutions provided in the draft statutory instrument would result in a new independent UK right which would benefit from the date of the earlier designation of the EU. This new independent UK right would be governed exclusively by UK law; that is, it would no longer be governed by the Madrid Protocol.

4. However, in most cases, holders could regain the advantages provided for by the centralized management features of the Madrid System by subsequently designating the UK in their international registrations, which would then replace their newly independent UK rights.

Impact for EU rights holders

Aside from the administration aspects of EU trade marks, EU intellectual property right holders and users may also need to review any licensing and other contractual arrangements relating to the use of intellectual property within the EU and the UK.

EU trade mark applicants and trade mark holders should continue to watch for guidance on the unfolding Brexit scenario and take appropriate legal advice to ensure their rights remain protected.