Be Brexit ready: Important information about EU designations of International (Madrid Protocol) trade marks and International (Hague) Designs

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The UK is set to leave the EU on 31st October 2019 which will have an impact on certain Intellectual Property rights.  This is subject to negotiations between the UK and EU and whether a deal is reached. If there is a deal, there will be a transition period until at least December 2020 which will push back the effects of Brexit.  If there is a no deal Brexit on the 31 October, there will be no transitional period.

One detail we wanted to draw attention to concerns EU designations of an International (Madrid Protocol) trade mark or an International (Hague) Design.  Draft legislation provides for the automatic extension of any EU designation (trade mark or design) to the UK at exit day.  However, these new UK rights will sit outside of the main International (Madrid Protocol) trade mark or International (Hague) Design going forward and will need to be maintained separately.  They will not fall within the remit of the International trade mark or design, which means they will need to be renewed, assigned and monitored independently from the International mark or design.

For those who use the International (Madrid Protocol) trade mark system and/or International (Hague) Design system to protect their IP in the EU, as you will be aware, if the designation progresses without objection and/or opposition, it is unlikely an EU representative will have been appointed.  Therefore, at exit day, the UK right which falls out from the EU designation will not have a UK representative.  Therefore, our advice would be to appoint an EU representative for the EU designation now, so when your UK right falls out of the same, you will already have a UK representative listed.

If you have any further questions or require assistance on this matter please contact your usual Barker Brettell attorney.