France: Analysing Brexit’s impact on European trade marks and designs
In the latest international briefing for France, Aurélia Marie assesses the effect of Brexit on EU trade marks and designs
There are two possible scenarios following the vote on June 23 2016 in favour of Brexit: the agreement accepted by the European Commission on November 25, but not voted for by the UK Parliament is eventually accepted by the UK, or no agreement is found and the UK has to leave the European Union without any agreed rules on March 29 (hard Brexit).
In the first scenario, the agreement provides a transitional period from March 30 2019 to December 31 2020 and provides for the continuation of rights attached to European trademarks and designs in the UK. In addition, during this transitional period, the UK will remain subject to all European regulations.
EU trademarks will give rights for their remaining duration to national comparable trademarks in the UK with no new examination. The same rules will apply for registered designs and non-registered designs.
For pending filings, an extended priority period of nine months to file nationally in the UK after the end of the transitional period for both trademarks and designs is provided
An EU administrative or court action pending on December 31 2020 (EUIPO or ECJ) will have effect in the UK even if the decision is to occur after the transitional period, except if the grounds of the decision are not applicable in the UK.
If no agreement is established, on March 29, the UK will become a "third country" to the EU. There is no current UK regulation to cover what will happen to EU trademarks and designs, only drafts. However, these drafts seem to provide similar provisions to those in the agreement.
As the amount of fees for renewal is unknown, it may be beneficial for registrants to renew all EU trademarks or designs that can be renewed before March 29.
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