2017/12 > Communication from the European commission to the users of the European union trademarks and designs system

Since the vote in favor of Brexit on 24 June 2016, and the day after 29 March 2017, the official implementation date of Article 50 of the Treaty on European Union by the United Kingdom triggering the process of its exit from the Union, negotiations began with the European Commission.

The United Kingdom can now take full measure of the imminent non-application on its territory of EU law and its four fundamental rules of freedom – free movement of persons, property, services and goods within the Union – and definition of new relations with the European Union is now under discussion. A transition period of two years is planned for this purpose during which the United Kingdom will nevertheless continue to apply European regulations.

For the time being, no information has been provided on the future of European trademarks and designs that were filed and which therefore cover the United Kingdom as a territory of the Union, nor with regard to the rules applicable to trademarks and designs that will be newly filed.

The European Commission, however, published a note on December 1st 2017 addressing the situation regarding these rights when the United Kingdom has left the European Union.

This note was also countersigned by EUIPO.

Thus, according to this note, and starting from March 30, 2019, no effect in United Kingdom will be given to:

• Registered European trademarks, registered Community designs and unregistered Community designs,
• Applications filed but not yet registered with EUIPO,
• Claims of seniority associated with national British rights.

 

European trademark and design designations through the Madrid and Hague system will also be deprived of effect in the United Kingdom.

In addition, any newly filed application, whether it concerns a trademark or a design, will not cover the United Kingdom, but only the 27 remaining Member States.

All actors in IP in the United Kingdom are convinced that measures will be adopted to ensure the continuation of already-acquired European rights in the United Kingdom, but so far, there has been no declaration from the British Government in relation to this subject.

For the moment, therefore, this note from the Commission does not envisage any possibility of conversion into English national rights, of the existing European rights, which today by definition cover United Kingdom, or safeguard of previously acquired rights.

This note invites all IP right holders and operators to be cautious of the impact of the UK’s exit from the European Union. One of the clarifications provided is that any natural or legal person domiciled in the United Kingdom will have to appoint a European representative in order to be represented before EUIPO in all procedures, except for filing applications.

It is important to state that this note, which is presented as information given to the owners of European trademarks and designs, has no binding value but was drafted to draw the attention of the economic players to the consequences of United Kingdom’s exit from European Union.

However, it implicitly invites right holders to consider national filings in the United Kingdom in addition to newly applied European trademarks and designs.

This is particularly important for designs since once they have been disclosed by their owners, through filing, and once the grace period has expired, it is no longer possible to validly proceed with a new filing of the same design.

It also invites rights-holders to proceed with national filings for trademarks already registered at European level, and to maintain existing national UK trademarks.