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25 September 2018Copyright

Existing EUTMs to cover UK in no-deal Brexit, says government

The UK government announced yesterday that all existing EU trademarks (EUTMs) and registered Community designs (RCDs) will still be protected in the UK in a no-deal Brexit scenario.

This will be achieved by providing an equivalent trademark or design registered in the UK, which will come into force after the UK leaves the EU on March 29, 2019. The new right will be provided with “minimal administrative burden”, the government said.

Businesses that have pending EUTM or RCD applications at the time of the UK’s exit from the EU will have a nine-month period to apply for the same protection in the UK.

These applications will be made “under the same terms for a UK equivalent right, under the normal application process for registered trademarks and registered designs in the UK”.

In addition, the government said it will work with the World Intellectual Property Organization to provide continued protection in the UK for trademarks and designs filed through the Madrid Protocol and the Hague System.

‘Pleasing’ progress but costs questions

Lee Curtis, partner at UK-based law firm HGF, said it is “pleasing” that the government has said applications and registrations can be “cloned” into corresponding UK applications and registrations with no loss of rights.

“This does suggest that many of the fears of loss of trademark rights in the event of Brexit, whether in a no-deal or deal scenario, were overblown and that many of the duplicate UK trademark registrations filed over the past 18 months were simply unnecessary.”

However, Curtis added that the new paper is not completely clear on the issue of costs.

“I have presumed the conversion of registered EUTMs with a ‘minimal administrative burden’ suggests conversion will be free, and this to a degree tallies with the recent comments of Robin Walker, parliamentary under-secretary of state for exiting the EU.”

Walker said in July that the government will convert existing EUTMs and RCDs for free after Brexit.

However, Curtis said the government’s latest guidance on costs is “not exactly unambiguous”.

Curtis added the government’s plan to convert EUTM applications under the same terms as those for a UK equivalent right “suggests that the official fee for filing these converted applications will be the same as a ‘normal’ UK trademark application”.

He explained that we should know if a ‘no-deal’ Brexit scenario is likely by November.

“Given that by then we will be less than five months away from Brexit, the argument for filing duplicate UK applications will make increasing sense,” concluded Curtis.

On the issue of unregistered Community design rights, the government said that designs existing at the point of Brexit will continue to be protected in the UK for the remaining period of that right. In addition, the UK will create a new unregistered design right which mirrors the unregistered Community design right.

Representation rights

Although the paper did not address whether UK lawyers will be able to act before the European Union Intellectual Property Office (EUIPO) after Brexit, this question was posed by MP Julian Sturdy to the Department for Exiting the EU on Friday, September 21.

Chris Heaton-Harris, parliamentary under-secretary for the department, explained that the government is working closely with the legal services sector to prepare for new arrangements between the UK and the EU, including allowing joint practice between UK and EU lawyers.

“In the meantime, we are working with the EU to ensure that the Withdrawal Agreement allows UK practitioners to complete pending proceedings if they are representing clients before the EUIPO at the end of the implementation period,” said Heaton-Harris.

Changes in copyright law

The government also outlined the changes to UK copyright law in the event of a ‘no-deal’ Brexit.

While international treaties on copyright will remain largely unchanged, the UK will be treated as a third country when it comes to EU cross-border copyright mechanisms.

These include the country-of-origin principle for copyright clearance in satellite broadcasting and the portability of online content services.

As a result, UK-based satellite broadcasters that currently rely on the country-of-origin copyright clearance rule may need to clear copyright in each member state in which they broadcast.

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Trademarks
24 August 2018   The UK government yesterday published its guidance on a “no deal” Brexit, providing limited but useful information on IP post-Brexit, according to lawyers.
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14 September 2018   The UK government released another series of papers providing guidance on a “no deal” Brexit yesterday. WIPR spoke to IP lawyers to find out more.