‘Deal’ or ‘No Deal’ – Brexit and trade marks

The UK is due to exit the EU on 29 March 2019, just over two months away. With the British House of Commons rejecting the Withdrawal Agreement between the UK and the EU on 15 January 2019, there is uncertainty as to whether there will be a ‘deal’ or ‘no deal’ between the UK and the EU on exit or indeed, whether the UK will remain part of the EU, requiring a new UK vote on Brexit.

Depending on the circumstances, the following considerations and time frames concerning trade marks are expected to apply:

• The UK and EU reach a ‘deal’ before 29 March 2019: All EUTM^[1] trade mark registrations will be considered in force and effect in the UK until 21 January 2021. On 21 January 2021 replica UK trade marks, in addition to the existing EUTMs, will be automatically created while holders of all pending EUTM registrations will have nine months from then to choose whether the pending EUTM should also be replicated to a UK trade mark;
• The UK and EU reach ‘no deal’ and the UK exits the EU on 29 March 2019: On 29 March 2019 replica UK trade marks, in addition to the existing EUTMs, will be automatically created while holders of all pending EUTM registrations will have nine months, that is by 29 December 2019, to choose whether the pending EUTMs should also be replicated to a UK trade mark; and
• Discussions between the UK and EU continue and the deadline of 29 March 2019 extends: EUTM’s will continue to cover the UK as they currently do.

The UK is a major trading partner to South Africa. Our recommendation remains that a separate UK application be filed simultaneously on filing EUTM’s to avoid any uncertainty.

[1] A EUTM covers all 27 member countries of the EU, namely Austria, Belgium, Bulgaria, Cyprus, The Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the UK.