Does Brexit mean “game over” for your trademarks?
Published on 14th Feb 2019
Despite the tumultuous state of British politics, it still looks like the United Kingdom will leave the EU on 29 March 2019. Or maybe not: Whether the deadline will be postponed, or whether Brexit will ultimately be cancelled as a whole, remains to be seen. If Brexit does take place on or after 29 March, it is also uncertain whether this will be under an agreement whereby the UK will effectively remain within EU law for a transitional period until 31 December 2020 (extendable to 31 December 2021) or whether it is a so-called hard or “no-deal” Brexit.
If there is a “no-deal” Brexit on or after 29 March, then the UK will no longer be covered by EU trade marks and Community registered designs. What does this mean for the name of your games – or even your company? We have compiled some pointers and recommendations:
- New "comparable" trade marks in UK – The UK government intends to automatically create a UK comparable trade mark for every EU trade mark that was registered before 29 March. The legislation through which this will be achieved has been published in draft and it is expected to be approved by the UK parliament before 29 March if there is a no-deal Brexit.
- Pending EU trade marks – The UK government does not intend to automatically create comparable UK applications for pending EU trade marks. However, it does intend to provide such applicants with a 9 month priority period from Brexit during which they can file new UK trade mark applications.
- International trade marks designating the EU - The UK government had provided assurances that there will be continuity of protection in the UK for International trade marks which currently designate the EU. Discussions between the UK and the World Intellectual Property Office about how to achieve this are ongoing.
- Pending EU oppositions and cancellation actions – Existing disputes at the EUIPO will not automatically give rise to an equivalent dispute in respect of the equivalent UK right, whether that is a UK comparable trade mark or registered design or a new UK trade mark application or registered design application filed within the 9 month priority period granted in respect of pending EU rights.
As you can see, there are mechanisms designed to ensure the continued protection of your IP in the UK, but they are not automatic – it is crucial to watch out for relevant filing requirements and deadlines, including renewal deadlines. Getting local legal advice early on is recommended!