Intellectual Property Brexit Checklist

Author:Mr Ashley Williams, Yancho Yanchev, Nadia Gracias and Allegra Chan
Profession:Withers LLP
 
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In the event of a no-deal Brexit scenario, the UK would leave the EU immediately on 31 October 2019 with no agreement in place governing the withdrawal or the ongoing relationship between the UK and the EU.

Here's the ultimate Intellectual Property (IP) Brexit checklist that will help tech companies navigate some of the uncertainties of a no-deal Brexit.

Verdict: UK IP right holders are at risk of losing EU rights (namely database rights and the ability to own an .eu domain name) and will need to maintain registrations across two territories to ensure ongoing protection for registered IP rights.

30 second summary: Registered EU Trademark ('EUTMs') and Registered Community Design ('RCDs') will cease to apply in the UK; however, the UK will plug this gap with an equivalent “child right”. UK companies should pay particular attention to any pending applications or pending proceedings involving EUTMs and RCDs. UK companies will lose their database rights in the EU and should ensure there are robust contractual restrictions around any use of any databases licensed out/made publicly available to mitigate against this. UK companies will also lose the right to hold .eu domain names and should look to transfer these to an affiliated EU entity.

Checklist:

Existing EUTM/RCD registrations: The EUTM/RCD will cease to apply in the UK after Brexit; however, the UK will automatically grant an equivalent 'child right' which will offer the equivalent UK protection and renewal dates of the UK child right will coincide with the corresponding EUTM/RCD. Proprietors will receive a notification of the UK child right being granted and can choose to opt out of receiving the UK child right. No additional fees required. Pending EUTM/RCD applications: Review any existing applications which have not yet been granted. The EUTM/RCD granted pursuant to any applications pending as at the date of Brexit will not come into existence in the UK after Brexit. Applicants of pending EUTM/RCD applications as at Brexit date will not receive any notification, and must consider themselves whether they need to refile with the UK IPO to obtain equivalent protection in the UK and must apply for an equivalent UK protection (UK registered trade mark/design) / UK 'child right' within a specific period (currently 9 months) from the date of Brexit. The UK will recognise the filing dates and priority claims of the corresponding EU application. The additional fees will need to be paid by the...

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