Draft trade mark legislation for a no deal Brexit

The UK Government has published draft legislation, The Trade Marks (Amendment etc) (EU Exit) Regulations 2018 (see https://dycip.com/TM-amendment-eu-exit), which confirms the UK government guidance notes, published on 24 September 2018, on trade marks in the event of a no deal Brexit.

The draft legislation provides that an existing EU trade mark registration will be treated on and after exit day as if it had been filed and registered as a UK trade mark. The new registered trade mark will be referred to as a “comparable trade mark (EU)”, and will be created automatically and at no cost to the registered owner.

There is a provision to opt out if the EU trade mark owner does not wish to own a comparable trade mark (EU), however it is not possible to opt out if the mark has been put to use in the UK on or after exit day by the registered owner or with their consent; if the mark is subject to an assignment, licence, security interest or other agreement or document; or if there are pending proceedings based on the comparable trade mark (EU).

In relation to EU trade mark applications which are pending on exit day, applicants may file a new UK trade mark application within a period of nine months from exit day, maintaining the ling date, priority date or seniority date.

The draft Regulations do not make reference to international trade mark registrations or applications (trade marks protected or filed through the Madrid system), however the UK government stated in its guidance notes its intention to work with the World Intellectual Property Organisation (WIPO) to provide continued protection of existing International registrations and find “practical solutions” for pending applications.