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Another Fine Mess

“…..Another fine mess………”

With an uncanny sense of comedic timing, the film “Stan & Ollie” is being released this month in the UK.  The famous duo’s catchphrase seems apt to describe the current state of the UK’s Brexit process.  We still do not know how or when, or even if, the UK will leave the EU.  However, if nothing changes, the UK will leave the EU on 29th March 2019

This means there is a very real danger that trade mark owners and their advisors will be caught unawares.  Here is our advice to trade mark owners everywhere, and to their advisors around the world, on how to be ready:
1. Make sure your existing UK attorneys have in place robust Brexit strategies. 

As things stand, UK attorneys and lawyers will not in general be entitled to handle EU trade mark and design matters after 29th March 2019. 
WE SAY: Wynne-Jones UK attorneys will still handle EU trade mark and design matters after 29th March 2019.  We will do this by virtue of our part ownership of AIPEX*.  In other words, we have a robust Brexit strategy in place – one less thing for Wynne-Jones’ clients to worry about at this uncertain time.

2. Existing EU trade mark registrations will be split automatically into separate EU and UK parts. 

As long as their existing EU registrations have an address for service in the European Economic Area, owners of such registrations need take no action unless they do not want protection in both jurisdictions (there is an opt out).  However, please note that the UK may change this after Brexit so that a UK address for service will be required.    
WE THINK: a UK address for service is advisable from day one because we expect the UK IPO to quickly diverge from EU IPO practice in lots of subtle but important ways

3. EU design registrations may be split automatically in the same way, but this is yet to be confirmed. 
PLEASE ENSURE: that your UK (or EEA) attorneys are alert to this in order to ensure there is no loss of rights.

4. Owners of EU trade mark and design applications will need to request the cloning of their applications into corresponding UK applications. 
There will be 9 months to do this.  Again, an EEA address for service will be sufficient.  However…
WE RECOMMEND: having a UK address for service as there will be an immediate need to liaise with the UK IPO in ways that will determine the outcome of the applications and the scope of protection acquired.
5. Separate renewals will be required for both the EU and UK trade mark and design registrations resulting from the split of existing EU registrations
Such registrations can be renewed up to 6 months early. 
WE ADVISE THAT: If you or your clients have registrations that are due for renewal up to 28th September 2019, you can save fees by renewing them early and paying only one fee.
6. Existing agreements such as co-existence agreements, consents and licences that were in are force in the whole of the EU before Brexit will be deemed to cover the UK after Brexit (as well as the EU)
No action is needed – relax!
7. Any attack on an EU registration after Brexit may need an additional challenge against the UK registration
It appears that, where an EU trade mark registration is under attack at the EU IPO, and a new UK trade mark registration is hived off from it when the UK leaves the EU, there is no provision for the attack at the EU IPO to also be cloned into an attack at the UK IPO.  Thus, the attacker of the EU trade mark registration may need to file a new challenge against the new UK registration.
ENSURE: that your attorneys are alert to this and check if action is needed on a case by case basis.


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