posted on January 19, 2019
The United Kingdom of Great Britain and Northern Ireland are expected to leave the European Union on March 29, 2019.
This has consequences for European trademarks and international trademarks with designations in the EU as well as European designs and international designs with designations in the EU, as these IP rights apply in the territory of the European Union. This means that as soon as the UK leaves the EU, these Trademarks and Designs will lose their validity in the UK.
In the Brexit negotiations to date, these circumstances have been addressed and in a draft, the so-called Withdrawal Agreement (between the EU and the UK) it has been provided that owners of EU trademarks and EU designs are to have the possibility of having an enforceable IP right in the United Kingdom while maintaining the previous priority.
In the vote that took place on January 15, 2019 in the UK, this Withdrawal Agreement has been rejected, which makes a hard Brexit more likely. Due to the current situation, it isn’t possible to predict how the situation in the UK will develop with respect to EU trademarks and EU designs, and these IP rights may lose their national protective effect upon the UK’s withdrawal.
Therefore, it may be advisable to quickly ensure additional protection in the UK by applying for national British IP rights or by extending any existing international trademarks or designs to the UK. In the case of designs, it should be noted that there is a novelty requirement, meaning it may no longer be possible to file an application after the priority period has expired. However, in this situation, an application as a 3D trademark could be considered, which would require a closer examination under national British law depending on the respective case.
Especially if the UK is an important market, the above-mentioned protective measures should definitely be considered.