February 5, 2020
Great Britain’s departure from the EU is coming – and getting more complicated.
In December, Great Britain received a new government with a clear conservative majority. As a result, the departure from the EU promised by Prime Minister Boris Johnson was materialised at the end of January.
However, that is still not the finish line for the departure; the toughest negotiations are yet to come. The departure date was the start of a year-long transitional period during which Britain must negotiate a deal on a new relationship with the European Union. There is much to be agreed, and the general projection is that one year will not be enough to reach a deal. So a hard “no-deal Brexit” is still a possibility. Leaving without a deal would mean that trade between the EU and Great Britain would take place solely under the rules of the World Trade Organization (WTO) in the future.
Here are the main effects of Brexit on IPR issues:
Protection similar to that in the EU has been promised for trademarks and design rights...
The format of Brexit is of great importance to the holders of IP rights. The British Government has already promised that EU trademark and design right registrations currently in force will enjoy a similar level of protection in Great Britain as national rights.
According to present information, the goal is for this transition to be carried out with minimal effort, and most importantly, according to current knowledge, at no extra cost to rightholders.
…but if your application is pending when the transition period ends on 31.12.2020, you will need to apply for a new registration in Great Britain
If the trademark or design right application has been filed before the end of the transition period, but is still pending then, you will need to apply for separate registration in Great Britain. This is done in accordance with normal national regulations and by paying the normal fees. The good news for applicants is that the British Government has promised to grant a period of nine months after the transition period before UK’s final withdrawal from the EU, within which applicants will have priority from the filing date of the original EU application.
Be vigilant: the British Government will not issue warnings regarding the need for a national application on its own initiative
The bad news for applicants, on the other hand, is that the Government has not promised to inform applicants of the potential need for a new national application in Great Britain on its own initiative. As a result, applicants must themselves be active as regards any follow-up applications. This uncertainty may provide fraudsters with an opportunity to send misleading notifications to applicants, possibly causing additional costs and inconvenience.
I am applying for a new EU trademark or my process is pending – what should I do now?
Both rightholders and new applicants must now take into account that Great Britain will no longer fall within the scope of the EU after a short transitional period.
Please contact a Kolster trademark or design attorney immediately to avoid any loss of rights:
- if you are applying for a new EU trademark or EU design
- if you have a pending application process in the EU office
You can also already initiate a national trademark application
If you want to minimise any issues caused by Brexit as regards trademarks in this connection, you can initiate a national trademark application in Great Britain in addition to your EU trademark application. The price is EUR 1,165 + VAT (incl. one class, attorney work and office fee). Successful trademarks will incur registration costs separately when registration is granted in due course. With registration costs, the price is around EUR 1,600 + VAT. Similarly, a national application can be filed in Great Britain for a pending EU design application. The cost of an application covering a single design is around EUR 1,100 + VAT (registration costs not included).
We can review your situation and advise you to achieve the best outcome.