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How a Brexit “no deal” could affect your trademarks and design rights

First publishedin Aggregates Business Europe
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Kathryn Heath
With Brexit never far from the headlines Kathryn Heath, an expert in intellectual property at Stephens Scown, explains what a “no deal” could mean for your trademarks and design rights.

Trademark registrations for key products and services and even business and trading names are essential for high-growth businesses. Securing a trademark results in one of the most powerful rights a business can buy – a legal monopoly over the badge of origin that separates one business from another. It is a valuable way to protect a business’s hard-won reputation.

For aggregates businesses trademarks may cover business names, product lines, group business names, strap lines and logos – basically any public-facing part of your branding or identity.  

At the time of writing, Theresa May’s proposed EU Withdrawal Agreement was still being debated, with resignations of cabinet ministers and threats of a vote of no confidence in the prime minister. It seems that a no-deal Brexit is still a very real possibility. So what would it mean for your trademarks and design rights?

Since the mid-1990s, the system around trademarks and design rights has been harmonised to encourage businesses to use the EU system, as opposed to national alternatives. It is a system that has worked well – offering cost-effective protection across all EU member states by way of a single filing.

However, things are about to change.

Trademarks post-Brexit “no deal”

In the event of a “no deal” EU registered trademarks will no longer cover the UK. However, they will be effective in the rest of the EU member states. The UK government states that equivalent UK rights can be obtained “with minimal administrative burden”.

This means that if you own a registered EU trademark you could obtain a corresponding UK right after Brexit. However, it is unclear what “minimal administrative burden” means and whether additional costs will be incurred in achieving this.

Pending EU trademark applications made but not completed by the end of the exit date will not be offered protection in the UK, unless within nine months from the exit a linked UK application is filed.

In the case of refiling, a UK application will enjoy the same filing and priority dates as its EU counterpart. However, it is likely to follow a normal UK trademark registration process. This may mean that a new linked application may need to be filed, examined and go through a second-round opposition period. This could lead to further costs being incurred.

There is no guidance yet in relation to the ongoing trademark disputes that are not concluded by the date of Brexit.

Design rights post-Brexit “no deal”

The situation for registered (EU) Community design rights is the same as trademarks, as described above.

Unregistered Community design rights which arose before the Brexit date will still be valid in the UK post-Brexit for the remaining time that the right is valid and will continue to cover the UK automatically.

As with trademarks, there is currently no guidance in relation to ongoing design disputes in the UK courts.

Take action now

According to the UK’s guidance, the “continued protection” of trademark and design rights would be at the heart of a Brexit “no-deal” scenario. However, it should be noted that the guidance is not comprehensive and it is unclear on the meaning of “minimal administrative burden” and other potential pitfalls of a Brexit “no-deal” scenario.

Therefore, if you want to de-risk the situation, avoid the Brexit ambiguity and additional “administrative burdens” which may well be an additional financial constraint, it is advisable to take action now.

Owners of registered EU trademarks and designs who are worried about protection in the UK should file a UK application as soon as possible.

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