Posted on 3/11/2019

Brexit – Update

We provide a brief update on the impact of a No-Deal Brexit on intellectual property in the UK.

Remarkably, the situation around Brexit remains up in the air.  In brief, assuming that we leave the EU with a deal similar to that negotiated by Theresa May and renegotiated by Boris Johnson, nothing has changed to the IP situation as outlined in our update around 12 months ago, here.

In the event of a No-Deal Brexit, the currently understood position in relation European patents, EU trade marks and Community designs is as follows.

European Patents

European patents will not be affected by Brexit.

EU Registered Trade Marks and Community Registered Designs

On the day the UK leaves the EU, a comparable UK registered right will be created automatically for every registered EU right.  The UK right will fall due for renewal on the same date at the original EU right.

An address for service (currently in the EEA) will be required for these newly created rights.  Where we are responsible for your EU right, we will remain responsible for the UK right.  We will be happy to take on representation for UK rights based on EU rights that are dealt with by attorneys in mainland Europe.

Pending EU Trade Mark and Community Design Applications

On the day the UK leaves the EU, pending EU trade mark and Community design applications will no longer have effect in the UK.  It will, however, be possible to file a corresponding new UK application which, if filed within 9 months of exit, can retain the filing / priority date of the original EU or Community application.  The application process (and cost) is expected to be comparable to that of a regular UK trade mark or design application.

Disruption to online services

In the days before 31 October, the UKIPO alerted us that if Brexit occurred that day, there would be disruption to the online filing services to register designs and trade marks from 31 October 2019 to 4 November 2019 for “planned maintenance” associated with the creation of the comparable rights mentioned above.

It is possible to file UK designs and trade marks by post, but the fees for doing so are higher and the process is not as immediate.  Accordingly, the next time that it appears the UK may leave the EU, we would advise ensuring that you send instructions well in advance of any deadline around Brexit day.

If you have any questions regarding the impact of Brexit on your IP please contact one of our attorneys.

Wilson Gunn