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Brexit news: what should be done for EU trademarks and Community designs

November - 2018
The latest developments relating to Brexit are that, even if a deal was reached, nothing is yet sure as several validation steps are required before final acceptance of the negotiated deal. However, the chances of UK leaving the European Union on 29/03/2019 are still high, with or without deal. In that case, we indicate herein our advice as to what should be done to be prepared to the UK exit of the EU on 29/03/2019.

Registered European Union trademarks (EUTMs) and Community designs (RCDs) will remain in force for the 27 remaining members of the European Union while a UK right corresponding to the EU right (i.e a UK trademark for a EUTM or a UK design for a RCD), having the same filing date, and priority right if any, will be created.

Filed but still unregistered EUTMs and RCDs as of 29/03/2019 should benefit from a kind of “priority date” to be filed in UK.

In view of this, our advice is as follows.

File as soon as possible EUTMs and RCDs in order to have rights registered before the EUIPO before 29/03/2019 and thereby avoid having to file in UK.

For EUTMs, taking into account the 3-month opposition period before EUIPO, this means that trademarks should be filed before beginning of December 2018, and preferably under Fast track conditions, namely payment of the official fees at the time of filing, and use only of already checked and accepted designated goods and services (Harmonised Databse: tmclass.tmdn.org/ec2/). This will allow accelerated publication in about 2 weeks from filing, and therefore should ensure that the opposition period will be finished soon enough so that, if no opposition is filed, the EUTM will be registered by 29/03/2019.

For EUTMs and RCDs that are soon to be renewed, renew your rights before EUIPO before 29/03/2019 in order to avoid the need to renew both the European right (EUTM or RCD) and the corresponding UK right after that date.

As trademarks and designs can be renewed up to 6 months before the due date, rights that should be renewed up to 28/09/2019 can be renewed before 29/03/2019.