A Brexit without a deal leaves un­cer­tainty about trade­mark rights in the United King­dom

On March 29, 2017, the United Kingdom notified its intention to withdraw from the European Union, which will take effect on March 29, 2019. As a result, EU trademarks currently in force in the 28 State Members of the European Union will no longer have any effect in the United Kingdom after Brexit.

Over the past two years the withdrawing government has been negotiating an agreement with the EU to mitigate the consequences of its pulling out, in which it was proposed that all community trademarks be repeated in the United Kingdom registry. However, on January 15, 2019 the House of Commons of the United Kingdom loudly rejected the fiercely negotiated agreement, only 10 weeks before the scheduled date of Brexit.

The possibility of an exit without a deal leaves uncertainty over the status of community trademarks registrations in the United Kingdom, although the British Government in a communication of 17 January reaffirmed its intention to replicate all EU trademark registrations in the United Kingdom, even in the absence of an agreement.

The British government ensures that the ownership rights of all registered trademarks and registered community designs existing in the EU will continue to be protected in the United Kingdom through the automatic granting of a national right.

Thus, if the promise is fulfilled, right holders of registered Community trademarks will have a new equivalent right in the United Kingdom, which will come into force at the time of the United Kingdom withdrawal and which will be treated as if they had been requested and registered in accordance with the UK legislation.

On the contrary, holders of CTM applications that are in progress on March 29, 2019 will have to submit a new application to the UJ Intellectual Property Office, with the only possibility of claiming an earlier priority date.

However, for the time being, the regulations announced have not yet been adopted and it is difficult to predict whether the House of Commons will approve the necessary legal provisions for its application before Brexit. To ensure the continuity of their rights in the United Kingdom, trademark owners should file national trademark applications before March 29.

Authors

Lola Kandelaft
Lola Kandelaft, LL.M.
Associate Director
Bogotá