For many years, brand holders have taken advantage of the comparatively inexpensive EU trade mark registration system to get registered rights in their trade marks covering all member countries of the European Union by filing a single trade mark application.

Since the shock referendum in the United Kingdom (UK) UK on 23 June 2016, which resulted in what was quickly and aptly named “Brexit”, there has been a serious question mark over the status of EU trade mark owners’ rights in the UK and, in particular, whether such rights will be recognised and enforceable in the UK after the implementation of Brexit (which is now set to happen on 30 March 2019).

In the absence of specific regulation to the contrary, the implication of Brexit for EU trade mark owners would be that their registered trade mark rights would not be recognised in the UK.

But there’s good news, last month the EU Commission released a paper on the draft agreement of the withdrawal of the UK from the European Community which included draft provisions dealing with the status of EU trade marks and Community designs in the UK after the implementation of Brexit.

Firstly, a transition period from 30 March 2019 to 31 December 2020 has been agreed, during which the current intellectual property framework governing the EU and the UK will remain substantially the same. In terms of the draft agreement contained in the paper released last month, after the transitional period, the UK intends to grant owners of registered EU rights comparable rights in the UK.

The draft agreement provides that all EU trade marks, international trade marks designating the EU and Community designs which are registered at the end of the transition period will automatically give rise to identical registered rights within the UK.

Conversely, if a registered EU trade mark or international trade mark designating the EU is cancelled or otherwise invalidated after the transition period as a result of proceedings that were ongoing on the last day of the transition period, the corresponding UK registration will automatically be invalidated, unless the grounds for cancellation or invalidation do not apply in the UK.

In addition, the draft agreement provides that a UK trade mark shall not be liable to revocation on the ground that the corresponding EU trade mark had not been used in the territory of the United Kingdom before the end of the transition period. This effectively means that the owner of a corresponding UK trade mark will have an additional “grace period” in which to commence use of the mark in the UK before the UK mark will become vulnerable to cancellation for non-use, although it is not yet clear how long this grace period will be.

In conclusion, although the draft agreement makes it clear that EU trade mark registrations will be recognised in the UK after Brexit, the administrative process, including whether any payment will be required, for the creation of corresponding UK rights is not clear. Nonetheless, this is welcome news for EU trade mark owners and no doubt further clarity regarding the procedural aspects of the recognition of EU trade mark rights in the UK will be made clear soon.

Written by Vicky Stilwell, Director, KISCH IP