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The good news is that there is no need to panic. The UK will not be leaving the EU until March 2019, and there will probably be transitional provisions beyond that to ensure a smooth change. There has already been a lot of work done on IP policy, in particular what will happen regarding pan-EU trade mark and design rights.
Although no decision has yet been made, the model for Brexit is likely to be Montenegro, which became independent in 2006. The so-called Montenegro-plus approach would see all EUTM registrations entered into the UK register on Brexit day, retaining their registration, priority and seniority dates.“It would be best for all concerned if EUTMs and RCDs were automatically transposed on the next day,” said CITMA President Kate O’Rourke in an interview with Managing IP, describing the Montenegro model as the “pragmatic approach”. Djura Mijatovic, managing partner of Zivko Mijatovic & Partners, who is based in Alicante, Spain, has first-hand experience of Montenegro’s independence and says the model is "the best of the possibilities" and "would be at least relatively simple to input into the UK trademark registry".
However, with some 1.2 million EUTMs on the register, there will still be many questions to address, notably about use (and non-use) of UK child registrations, and possibly non-use of EU parent applications (if the previous use was only in the UK). Other open questions concern open proceedings at the time of Brexit (there are thousands of opposition, cancellation and appeal cases pending at any time), seniority claims where the UK registration has lapsed, and representation rights for UK practitioners.
One issue O’Rourke highlights is the need for an address for service. “Hundreds of thousands of EUTMs will not have an address for service in the UK, so a decision will be needed about what to do with those post-Brexit. Could they retain an address for service in another country? That might be part of a diplomatic solution.”
Looking beyond registration, there will be a lively debate about what policy on trade mark exhaustion the UK should adopt post-Brexit, and there will be questions about the influence of CJEU decisions. The UK government’s White Paper in March said that all CJEU decisions up to Brexit day would have the same status as UK Supreme Court decisions, meaning they can only be departed from in limited circumstances. But what about CJEU judgments post-Brexit. At the recent Fordham IP Conference in New York, Mr Justice Arnold of the High Court said: “It is inevitable that future decisions of the CJEU will have persuasive value. The question is what persuasive weight they will have.”
Given the uncertainty, some IP owners are already taking a belt-and-braces approach, applying in the UK as well as the EU to ensure their trademarks and designs are protected, as shown by the 13% growth in UK trademark applications from 2015 to 2016. But O’Rourke is confident that re-filing of all EUTMs will not be necessary as appropriate transitional measures will be put in place: “There is still lots of work to be done, but we’re confident that trademark owners will be fine.”
The UK IPO has a booth in the INTA Annual Meeting Exhibition Hall (C40) where you can find out more about the latest developments regarding Brexit and IP rights in the UK
Action plan: prepare for Brexit in a week!
Monday: Consider filing UK trade mark applications for your most valuable EU marks, to ensure you have protection whatever happens
Tuesday: If you have an EUTM but your use is mainly in the UK, consider how you will prove use in the EU27 in the future
Wednesday: Review your licences and coexistence agreements, and consider whether to clarify definitions of jurisdiction and scope
Thursday: Review distribution channels, in case UK rules on exhaustion of rights change suddenly in 2019
Friday: Be prepared to start filing UK national trade mark applications from 2019 if you don’t already, and think about the budget implications
Saturday: If you rely on the Community unregistered design right, think carefully about where to launch new products from 2019 onwards
Sunday: Get the latest news from associations such as CITMA, ECTA, INTA and MARQUES which all have dedicated teams to monitor Brexit and lobby national authorities