Home > Renewal of Registered EU Trade Marks and Registered Community Designs
If the Brexit date is 31 October 2019, then all EUTMs and RCDs with renewal dates on or after 31 October 2019 will require separate UK renewal. Even if the EUTM’s renewal fee, or the RCD’s renewal fee, has been paid in advance, before 31 October 2019, the UK cloned right, created on 31 October 2019, will still require separate UK renewal. This is because although it is possible to renew an EUTM or RCD early, and the EUIPO record will then update to show a date in 2029 or 2024, in fact EUTM and RCD renewals only take effect on the day after expiry.
Therefore, if you wish to continue to protect your rights in the UK, please be advised that the UKIPO will require a separate fee in order to maintain the UK cloned right. During this initial period the UKIPO will set a special six-month date for renewal fee payments without regarding them as late payments, that is until 30 April 2020 in the event of Brexit being 31 October 2019. It is not possible to renew the UK cloned right yet, because it will not come into existence until Brexit day. Moreover, some owners might not wish to have UK protection, and might not choose to pay the fee.
Other considerations, including filing oppositions after Brexit
Proprietors of national trade mark applications/registrations in the UK need to consider the protection they require post-Brexit. If the UK does cease to be a member state of the EU on 31 October 2019, national UK trade mark rights can no longer be relied on as a basis of challenge against later EU trade mark rights.
This situation may not be of concern for businesses who use their trade marks solely within the territory of the UK. However, proprietors whose trade mark use extends to mainland Europe and/or to the Irish Republic might wish to consider filing European Trade Mark (EUTM) applications and/or national trade marks in any countries of particular interest to them within the EU, to ensure they have sufficient protection of their brands and designs.
Licences and security interests recorded at the EUIPO, which affect the UK, will be deemed to continue to have effect in the UK. Although, as discussed above, the UKIPO comparable right will clone the EU right, this does not mean that licences and security interests will automatically carry over. They will need to be separately recorded at the UKIPO.
The new UK cloned rights, as with any national UK trade marks, may be vulnerable to cancellation on the grounds of non-use if they are not used for an uninterrupted period of five years. For the cloned UK trade marks created on exit day, any use of the mark in the EU, whether inside or outside of the UK, which has been made prior to exit day will count as use of the cloned UK right. This means that where there is a challenge to a cloned UK trade mark on the grounds of non-use and the relevant five-year period includes time prior to exit day, the UKIPO will consider use in the EU when assessing whether the mark has been used in the relevant period. A similar approach will be applied to the assessment of reputation.
The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations amends the current IP legislation on exhaustion to include references to the UK in addition to the existing language of the EU or EEA, effectively preserving the status quo, in the case of exhaustion, on Brexit day. Regarding unregistered design rights, the UK Government has issued guidance that in the event of a no deal scenario they will take steps to ensure Unregistered Community (EU) Designs (“UCDs”) will continue in force in the UK after Brexit and that a new right will be created to mirror the protections provided by UCDs in the UK after the Brexit date.
It is still possible that an orderly withdrawal will be negotiated, which will preserve the status quo until at least the end of 2020. We suggest reviewing your IP to ensure it is adequate for your needs whatever the outcome.