The UK IP profession, primarily through the Chartered Institute of Trade Mark Attorneys (CITMA), is engaged in discussions with government concerning the impact of Brexit.
Of primary importance is the effect Brexit will have on existing European Union Trade Mark (EUTM) and Registered Community Design (RCD) rights. The profession is seeking a resolution which delivers legal certainty to IP rights owners whilst minimising their administrative burden and cost exposure. CITMA has initially identified seven possible options as follows:-
- Creation of a new broader EUTM system extending beyond EU Member States to include the likes of the UK, Norway, Switzerland and EU candidate countries.
- The UK government unilaterally deems EUTM registrations to have effect in the UK. The UKIPO and UK courts would treat EUTMs as having effect in the UK for the purposes of examination and this would involve a UK law deeming pre-Brexit EUTM registrations to cover the UK, without the need for recordal on the UK trade mark register or any other action.
- Existing EUTM registrations are automatically entered onto the UK trade mark register as UK trade mark registrations with the same scope of protection.
- Existing EUTM registrations are entered onto the UK trade mark register (as above) but only by request from the owner within a “sunrise” period.
- Existing EUTM registrations are entered onto the UK trade mark register (as above) but only if they meet national UK trade mark law acceptance criteria.
- On request, EUTM owners can create a corresponding UK trade mark registration when renewing their EUTM registration. The ensuing registrations would be enforceable in the UK and EU until renewal.
- Extension of EUTMs into a corresponding UK national application. The newly created UK applications would enjoy the same filing date and exist alongside the EUTM registration.
The above is not an exhaustive list. It merely forms part of evolving discussions. CITMA, with the input of the wider UK IP profession, will maintain an active dialogue with the UK IPO and government during Brexit negotiations. We will provide updates as matters progress and a clearer picture emerges.