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Trade marks and registered designs post-Brexit

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John Ferdinand, Marks & Clerk

John Ferdinand, trademark attorney at intellectual property firm Marks & Clerk, warns that the legal protection of trademarks and designs will change after the UK leaves the European Union.

With the UK’s Brexit transition period formally ending on 31 December 2020, meaning EU law will no longer apply in the UK, companies across the transport sector are being urged to make sure they know what the end of the transition period means for their trade marks and designs to ensure they are adequately protected.

Up to now, many companies have relied on EU Trade Marks (EUTMs) and Registered Community Designs (RCDs) for protection – but, as these are based on EU law, they will no longer apply in the UK. However, the good news is that companies won’t lose protection as the UK Intellectual Property Office (UKIPO) will automatically, and without charge, create comparable UK Trade Marks and designs – and they will have the same legal status as if they had been applied for under UK law.

But, despite this automatic creation of rights, it is important that companies operating across the transport sector do not become complacent, as there are still actions that should be taken now to prepare for 2021.

Getting ahead of the Brexit curve

There are three key steps that companies can take to get make sure they are ready for the end of the transition period:

Step 1: Check ownership details of current EU trade marks and registered designs to ensure they are up to date, because those details will be carried over and registered by the UKIPO. If they are incorrect, it may lead to further expense and inconvenience down the line, so any necessary changes should be registered before the end of the transition period.

Step 2: Consider bringing any new application forward and filing it before the end of the year if possible.  As of next year, owners of cloned EU Trade Marks will be notified by the UK Intellectual Property Office of the filing of later applications, which is likely to increase the risk of opposition from third party trade mark owners.

Step 3: Act now and adapt a longer-term intellectual property strategy to prepare for the UK’s exit from the EU. The EU is one of the UK’s largest export markets – accounting for almost £300 billion of exports in 2019 (43 per cent of all UK exports).  In 2019, road vehicles were the second largest export to the EU, valued at £17.3 billion (more than 10 per cent of total goods exports to the EU), followed closely be ‘other transport equipment’ with a value of £9.9 billion (almost six per cent of all goods exported to the EU).  Whatever the eventual shape of the trading relationship agreed between the UK and the EU, the EU will remain a close trading partner of the UK.

Road vehicles and other transport equipment represents around 16% of all UK exports to the EU.

The Madrid Protocol

Companies will, in future, need to file separate trade mark applications covering the UK and EU.

Alternatively, companies can revert to the Madrid Protocol – an international trade mark system that allows for the one-stop registration of trade marks in all signatory states. The Madrid Union currently has 107 members covering 123 countries.

It can be a more cost efficient to use this system if intending to file in three or more countries and, given the wide-ranging protection the system offers in the UK, EU and elsewhere, there is likely to be much greater use of this system in the UK.

Those who currently hold an EU Trade Mark registration through the Madrid Protocol will receive a comparable national UK trade mark when the transition period ends.  They will have the option to opt back into the Madrid system, which will replace the UK-comparable right, but this will be subject to filing fees and being examined/published for opposition purposes.

Wider global opportunities

Beyond the EU, the UK has already signed trade deals with a number of countries, including Japan, Israel, Iceland, Norway and Switzerland, with some other, bigger trade deals, such as USA and Australia, still to be finalised.

International business strategies will need to change to keep up with the evolving situation and, inevitably, business owners will seek more globally focussed intellectual property rights. This time of real change has the potential to be a time of real opportunity for those with the right IP protection in place.

Intellectual property is a key asset – in many cases the most valuable asset.  Whether it’s the time and ingenuity invested in innovative designs, or the goodwill and brand value inherent within a trade mark, it is vital these assets are safeguarded.

It’s not just about protecting their IP as the transition period comes to an end – it’s about making sure companies are ready to capitalise on the opportunities life outside the EU might present.

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