Trade Marks & Brexit – A Further Update

The UK’s departure from the EU has now been delayed until 31st October 2019, subject to us holding elections to the European Parliament, with an option to leave earlier if the UK ratifies the Withdrawal Agreement. This six month reprieve is very welcome, given that:

  1. The Withdrawal Agreement agreed between the British Prime Minister and the EU has been overwhelmingly rejected by Parliament, and
  2. There is still no consensus in Parliament as to which form Brexit should take, and if it should happen at all. Parliament is only clear that it does not want to see a “no-deal Brexit”.

As matters stand, the following scenarios are all possible:

  • The UK reaches an agreement with the EU by 31st October, beginning the transition period for implementing the Withdrawal Agreement until 31st December 2020, with this date marking the UK’s actual exit from the EU.
  • A further extension to the 31st October 2019 deadline will be sought, possibly to allow for a second referendum or general election to take place.
  • The UK crashes out of the EU on 31st October 2019 without a deal;
  • Article 50 is revoked and the UK remains in the EU.

We are following developments closely, and will continue to advise as matters develop.

Despite the political uncertainty, we do have more clarity around the fate of existing EU trade marks (EUTMs) when the UK leaves. Separate ‘cloned’ UK trade mark registrations will be created in the UK. These will mirror their corresponding EU registrations (or granted EU designations under the International Registration (IR) system), and there will be no official fee for this cloning process. The UKIPO recently clarified how the cloned UK registrations will be numbered – this will be by adding the prefix UK009 to the last 8 digits of the corresponding EUTM registration (follow this link).

In terms of timing, this will happen as soon as is reasonably practicable after 31st October (or later if this deadline is extended), or at the end of the transitional period if the UK leaves with a deal. In practical terms, therefore, the deal or no deal scenarios only affect the timing of this cloning process and not its substance.

Cleveland Scott York will take these cloned UK registrations onto our records without charge. Where we are currently responsible for existing EU registrations, we will automatically add the cloned UK mark to our records and let you know when we have done so. We are also happy to add UK registrations cloned from EUTMs managed by different Attorneys to our records.

The cloning process only applies to EUTM registrations existing on exit day, whether 31st October 2019 or 31st December 2020 (or any other day). In the case of EUTMs pending on exit day, applicants will have nine months within which to apply for cloned UK applications to be created from their pending EUTMs. There will be an official fee for this, which we understand will be the same as filing a new UK application.

Given the current state of play, there are circumstances in which brand owners should consider filing separate UK applications notwithstanding the cloning process. Our advice here is as follows:

  • Although the UK IPO has confidently claimed that cloned UK registrations will automatically be created from all existing EUTM registrations on exit day, we have no information about how it proposes to do this, and how long the process might take. In addition, it is not merely the creation of these cloned registrations which is relevant but the related administration which follows. Given that millions of cloned registrations will have to be added to the UK Register, we are concerned that there could be some delay while the process is completed and the Register may be in a state of flux for some time, particularly if the UK ‘crashes’ out of the EU on 31st October without a deal. A brand owner wishing to bypass the uncertainty caused by this can consider refiling a UK application now. This may be advisable if the UK is a particularly important market, or if the brand owner has a specific reason for wanting to secure an enforceable registration as quickly as possible, even in a no deal situation.
  • An EUTM filed now is unlikely to proceed to registration before 31 October 31st October, so an applicant may want to file simultaneous UK and EUTM applications to increase certainty and avoid having to apply for the pending EUTM to be cloned into a separate UK application within the 9 month window. Post-Brexit, separate UK and EU applications will of course be necessary in any event to secure protection in both jurisdictions.

We are also currently advising our clients to designate the UK as well as the EU within existing and future International Registrations. This is because the present provisions mean that an EU designation within an IR cannot give rise to a UK designation via the cloning process, but only to a UK national application/registration. Longer term, there are cost savings and administrative benefits to having the UK under the umbrella of an IR in this situation, rather than having a separate cloned UK registration.

If you would like any further advice regarding the implications of Brexit on your existing trade mark portfolio, whether your focus is before or after exit day, please do not hesitate to contact us.

In the meantime, we are continuing to monitor the situation and will keep you informed of developments.

By Jonathan CleggLorna Hobbs and Peter Houlihan

Updated 17 April 2019

Posted on: 28th February 2019