#Brexit: The effect on Community Trademarks and Registered Community Designs

Jason Smith Knowledge share
10 Aug’16

As time goes by and the shock of Brexit passes many businesses are wondering how the changes will effect them. I was heavily in favour of remaining within the EU but since the British public chose to leave we must look forward and prepare. As designers we need to protect our work and in type design trademarks are particularly important. We received some advice from our solicitors which I thought might be useful for others so I decided to share it on our blog. Here it is: 

‘At present, uncertainty exists about the specific leave scenarios. However, it is likely that after a formal exit from the EU, the UK will no longer be covered by Community-wide rights such as the Community Trademarks (CTM) or the Registered Community Designs (RCD).

CTM

  • The UK’s vote to leave the EU has no immediate impact on CTMs: the UK remains an EU Member State during its withdrawal negotiations and CTMs will continue to extend to the UK during this period.
  • Following withdrawal from the EU: existing CTMs will almost certainly cease to apply in the UK. However, it is likely that the UK government will permit owners of CTMs to re-file their CTM rights in the UK as national UK trade mark registrations, while retaining the original filing date of the CTM. At this stage, it is not clear what the timing or fee structure would be for this re-filing procedure.
  • Following withdrawal from the EU: new CTMs will not cover the UK. Applicants would have to apply for a separate UK national trade mark. CTM registrations will continue to apply in the other 27 EU Member States.

RCD

  • We anticipate that it will be the same rules for RCDs as for CTMs.

In summary, it is difficult to assess the full impact that leaving the EU will have on the protection and enforcement of trademark rights and designs in the UK, until the terms of the UK’s ‘post-Brexit’ relationship have been established. If you hold only European registered IP, and are wary over what protection or measures will be put in place, you may opt to file UK applications now rather than wait; this may help in spreading costs particularly if you hold multiple assets in your portfolio.’

The headache for any company with a high number of trademarks is potentially huge so I can see the attraction in filing for UK applications in advance. The issue with this is that we still don’t know what the government will decide to do in terms of helping out, covering costs or even transferring existing EU CTMs to cover the UK, so any pre-emptive action could be a waste of time and money. At present we don’t even know with 100% certainty that Brexit will go ahead so for us at least it’s a case of holding tight to see what happens for now…

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