In an uncertain world, we can at least take some comfort from the fact that we are starting to get clarity on the position regarding continued protection of EUTMs in the UK post-Brexit. Collective sigh of relief.
The snappily entitled Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (the “EUTM SI”) which governs the continued protection of EUTMs in the UK in the event of a no-deal Brexit, has now passed both Houses of Parliament and is ready to come into force on exit day (which currently means 11pm UK time on 29 March 2019).
The EUTM SI says, in summary, that a trade mark which is registered in the EUTM Register before exit day is to be treated on and after exit day as if an application had been made, and the trade mark had been registered in the UK. The owner of an EUTM which is pending on exit day has a period of 9 months beginning the day after exit day to file a comparable UK application and claim priority from its existing EUTM.
Of course, if Parliament votes in favour of the Draft Withdrawal Agreement, then the position will be as set out in our previous blog: Brexit: updated draft withdrawal agreement.
For the time being, the statutory instrument governing the continued protection of EU designations of International registrations (the “IR SI”) remains in draft form, having only been laid before the Houses of Parliament on 31 January 2019. The good news is that a motion to approve the IR SI was tabled by the Government on 20 February 2019 so we are, hopefully, not too far away from certainty on IRs as well.
In other news, we also now have clarification of how the new comparable rights will be identified on the UK Register. The UKIPO published guidance on 21 February 2019 confirming that these rights will be shown on the Register, prefixed “UK009”.
We will be sure to keep you posted on any further updates as they happen.