European Union Trade Marks, Community Designs, IP Agreements and Brexit -Update-
The Prime Minister of the United Kingdom has requested an extension of three months on the date for the UK’s exit from the European Union (EU), currently set out on 29 March 2019 in order to continue negotiations with the EU.
In the coming days it will be known if the EU accepts this delay and for which period or whether or not the United Kingdom will actually leave the EU on March 29, 2019.
On March 8, 2019 the UK Patent and Trademark Office (IPO) updated the memorandum issued last February informing of the possible post-Brexit scenarios regarding Intellectual Property rights that now have European territorial scope, in particular, European Union Trademarks (EUTM) and Community Designs (RCD).
The memorandum does not indicate substantial changes with respect to the previous one and in this regard, we refer you to our news of January 21, 2019 where we explained the different scenarios.
Regardless of the conditions of the exit with respect to EUTMs and RCDs, there is still the possibility of applying at any time for protection of national trademarks and national designs or as a subsequent designation via the Madrid System for the international trademark.
In the case of registered EUTMs and RCDs, if an extension beyond March 29, 2019 is not accepted or is not foreseen to be accepted, there is the possibility of requesting the early renewal before that date for those EUTMs and RCDs whose expiry takes place on or before September 28, 2019 (or when applicable six months after the effective Brexit date, if it is different from the one of March 29). In this way, the holder of the EUTM or the RCD will be able to avoid paying a renewal to the EUIPO and also to the IPO for the trademark or design that is equivalent after the exit.
Applications for UETMs and RCDs that have not been granted yet on the date of the exit from the EU deserve different treatment. In these cases, there is also the option to apply for national protection in the UK independently from now on, although apparently the UK Trademark Office also intends to implement a period in which they can be re-filed as UK national rights recognising their filing and/or priority date.
Finally, in relation to those IP contracts (technology transfer, distribution contracts, transfer of materials, research and development, among others) that have been signed prior to the exit from the EU, ZBM recommends reviewing the purpose of the contract and the particular situation of each agreement, especially when the territory of the United Kingdom as part of the EU was or is a determining element to carry out or comply with the obligations of the parties and/or affects the conditions initially agreed between them.
At ZBM we remain alert to any news that may occur and we are at your disposal to comment on your specific case.