Brexit: a summary of the legal position and practical mitigation steps for EU trademark and Community design right holders

What You Can Do

File UK national trademarks now, in parallel with EUTM protection.  The UK national trademark regime will not be impacted by Brexit.

This may provide duplicate protection in due course (if a deal is done for the UK to remain within the EUTM system or because UK national legislation enables a UK right to be extracted from an EUTM). However, having a newer UK registration may be useful since there are no proof of use requirements in the first 5 years of a UK registration.

Why (i.e. the legal position)

As of March 2019, the UK will be outside the EU trademarks (EUTMs) regime unless the UK makes a deal with the remaining member states of the EU before then enabling the UK to remain within the EUTM regime (which looks unlikely). There could be an agreement for a transitional period though, delaying the date of any departure from the EUTM regime.

If the UK is outside the EUTM regime, the UK is expected to introduce national legislation to preserve the acquis (the body of existing EU law) and to enable a UK right to be extracted from an EU trademark registration (or application). Draft legislation to shape the extraction process  for a UK right has yet to be laid before parliament and may be enacted under a streamlined system.

If a deal is not reached with the EU, and if appropriate national legislation is not passed, upon Brexit, EUTM owners could lose trademark coverage in the UK - but to assume this will happen would be to predetermine the outcome of the negotiations, the national legislation introduced and the common law courts' interpretation of the main withdrawal legislation.

For more detailed commentary of the impact of Brexit for trademark law in the UK, please see our detailed article here, section 7.

What You Can Do

When seeking to register a new design, apply for a UK registered design in parallel with any application for a Community registered design. The UK registered design regime will not be impacted by Brexit.

A new UK registered design would not be valid if it duplicates a design disclosed more than 12 months previously. However, where your Community design registration is less than one year old,  you can file within the first 12 months, an application for an equivalent UK registered design taking priority from the Community registration.  Even if this provides duplicate protection, it is the safer option, because it avoids the risk of no registered design protection existing in the UK.

Why (i.e. the legal position)

Community registered designs are in a similar position to EU trademarks. As of March 2019, the UK will be outside the Community registered designs regime unless the UK makes a deal before then with the remaining member states of the EU enabling the UK to remain within the Community registered designs system. There could be an agreement for a transitional period though, delaying the date of any departure from the Community designs regime.

If the UK is outside the Community registered designs regime, the UK is expected to introduce national legislation to preserve the acquis (the body of existing EU law) and to enable a UK right to be extracted from a Community registered design (or application). Draft legislation to shape the process for extraction of a UK right has yet to be laid before parliament and may be enacted under a streamlined system.

If a deal is not reached with the EU, and if appropriate national legislation is not passed, upon Brexit, it is possible that Community registered design right owners could lose design coverage in the UK - but to assume this will happen would be to predetermine the outcome of the negotiations, the legislation introduced and the common law courts' interpretation of the main withdrawal legislation.

For more detailed commentary on the impact of Brexit for designs law in the UK, please see our detailed article here, section 8.

Owners of Community unregistered design right may be able to rely on UK unregistered design right, but this is slightly different in scope (e.g. UK unregistered design right does not apply to surface decoration, whereas Community unregistered design right does). The UK unregistered design right regime will not be impacted by Brexit.

If you currently rely on Community unregistered design right to protect surface decoration (e.g. in the fashion industry), file an application for a UK registered design for any designs you have disclosed in the past year.

As of March 2019, the UK will be outside the Community unregistered designs regime unless the UK makes a deal with the remaining member states of the EU before then, enabling the UK to remain within the Community designs system. There could be an agreement for a transitional period though, delaying the date of any departure from the Community designs regime.

If the UK is outside the Community registered designs regime, the UK is expected to introduce national legislation to preserve the acquis. Draft legislation to shape the process for extraction of a UK right of the same scope as an EU unregistered design right has not yet been laid before parliament.

If the UK is  outside the Community unregistered designs regime, and if appropriate national legislation is not passed to create a new national right of exactly equivalent scope of the Community design right, it is possible that you could lose unregistered design right protection in the UK to the extent UK unregistered design right protection did not subsist - but to assume this will happen would be to predetermine the outcome of the negotiations, the legislation introduced and the common law courts' interpretation of the main withdrawal legislation.

For more detailed commentary on the impact of Brexit for designs law in the UK, please see our detailed article here, section 8