No deal Brexit - what does it mean for registered Community designs and trade marks

The UK government guidance on a no deal scenario also considers the situation for trade marks and designs. To save readers' paws the trouble of clicking through, the abbreviated text for each section is below together with some gratuitous use of bold and initial thoughts on what this could mean.

As they are unitary rights, the EU trade mark and registered Community designs are the most harmonised areas of IP law but in some respects, they offer the simplest solutions.

EU trade mark and registered Community designs

• existing registered EU trade marks or registered Community designs held will continue to be valid in the remaining EU member states
• protection of existing registered EU trade marks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden
• right holders will be notified that a new UK right has been granted. Any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out
• provision will be made regarding the status of legal disputes involving EU trade marks or registered Community designs which are ongoing before the UK courts and more information will be provided on this before the point at which the UK exits the EU
• applicants with a pending application for an EU trade mark or a registered Community design at the point of exit will be able to refile, within nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes
• applicants with pending applications for an EU trade mark or a registered Community design will not be notified and after exit will need to consider whether they refile with the Intellectual Property Office to obtain protection in the UK
• new applications will be eligible to be filed in the UK for UK trade marks and registered designs as they are now, and at the cost specified in the UK fee structure
• UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently

The government is working, including with the World Intellectual Property Organisation, to provide for continued protection in the UK from exit day onwards of registered trade marks and registered designs filed through the Madrid and Hague systems which designate the EU.

NB With registered Community designs there is a possibility that the refiling will be outside the one year grace period from first public disclosure. As the refiled design will be treated as having the same application date as the Community design this should avoid any issues regarding lack of novelty or individual character. In practice, Community designs tend to be granted very quickly so the number of pending applications is not that high.

The major upshot of this is a lot of new trade marks and designs being added to the UK register without (from the sounds of it) any examination by the UK IPO. Questions such as when the non-use period will run from (i.e. the date of being added to the UK register or the date they would apply in the EU) will be important in any invalidity action.

Unregistered Community designs

UK, EU and third country designers will be provided with continued protection for those designs first disclosed in EU27 member states and already protected by an unregistered Community design right at the point that the UK exits the EU. Through the new supplementary unregistered design right, designs which are disclosed in the UK after the UK exits the EU will be protected in the UK under the current terms of the unregistered Community design.

From that point:

• existing unregistered Community designs will continue to be valid in the remaining EU member states
• protection of existing unregistered Community designs in the UK will be provided for with no action required by the right holder
• provision will be made regarding the status of legal disputes involving unregistered Community designs which are ongoing before UK courts

This should reassure people in the fashion industry. However, businesses are likely going to have to become more sophisticated at ensuring simultaneous first disclosure in both the UK and EU post Brexit in order to ensure that they have both EU and UK unregistered Community designs. 

Correspondence addresses

As the UK IPO notes, UK right holders generally have a UK address for service, and some EEA business, organisations or individuals may also have a UK address for service.

Legal professional privilege is given to communications between registered intellectual property representatives and their clients. This means that in legal proceedings in the UK, for example, such communications are considered confidential and will not, generally, be shared with those on the other side of the dispute. This privilege is provided for in the UK’s intellectual property legislation.

For trade marks and designs, legal professional privilege is given to trade mark attorneys registered in the UK. It extends to those intellectual property representatives who are not based in the UK but are on the ‘list of representatives’ for the EU Intellectual Property Office for trade marks and designs. This list reflects the EEA geographical area.

The government does not anticipate any immediate immediate implications for UK, EU or third country businesses. The current rules will remain in place at the point the UK exits the EU.

There will be no changes to the UK address for service and privilege rules.

The notice explicitly does not covers issues such as:

• the rights of UK businesses, organisations and representatives to represent themselves, and on their choice of representatives in relation to EU trade marks and registered Community designs. 
• legal professional representation and address for service requirements relating to intellectual property rights protected at the national level in individual European Economic Area (EEA) states.

What does this all mean?

On the face of it, the guidance note presents a fairly simple solution. In practice there are some known unknowns and no doubt a few unknown (or unconsidered) unknowns.  For example, the litigation quandary appears to be too vast for this guidance note. 

Whatever the case, given that the official figures for 2017 showed over 1.7 million EU trade marks and registered Community designs and over 200,000 IR's which designate the EU, there is going to be a lot of virtual paperwork even if computers are responsible for the majority of the grunt work.