Guidance

EU and international designs and Brexit: legal issues for right holders

What to do if you have pending court proceedings and other legal issues.

Stay up to date

The UK is leaving the EU. This page tells you how to prepare for Brexit and will be updated if anything changes.

Sign up for email alerts to get the latest information.

No proof of registration for holders of new re-registered designs and comparable trade marks

Holders of new re-registered designs and comparable trade marks will not receive a UK registration certificate.

Details of the new UK right will be accessible via our Find a registered design, and Search for a trade mark services on GOV.UK, and also via the EUIPO’s DesignView platform.

Jurisdictional arrangements and pending proceedings

UK courts can currently act as EU courts in infringement actions relating to registered Community designs, EU trade marks, and international (EU) design and trade mark rights.

Cases are heard under the Community design regulation and the EU trade mark regulation, and the court can issue pan-EU injunctions.

We anticipate that on exit day there will be a small number of cases ongoing before these courts. member state.

However, it also confirms that actions and remedies taken or granted by the court are applicable to the re-registered design or comparable trade mark only.

We will no longer be under the jurisdiction of the EU legal system after exit day. As a result, any EU wide injunctions will not apply to the comparable UK rights.

Proceedings before the IPO’s tribunal which are ongoing at exit day will continue to be heard under the Registered Designs Act and the Trade Marks Act. These will include proceedings in which the holder of an RCD or international (EU) design or trade mark has brought an action against a UK national right.

These proceedings will continue towards resolution on the basis of the law as it stood prior to exit day. If you are a defendant in IPO proceedings based on an RCD or international (EU) right, or you are the holder of an RCD or international (EU) right and are involved in proceedings to oppose or cancel a UK registered design or trade mark, these will continue.

Existing injunctions

Court injunctions can prohibit actions which would otherwise give rise to the infringement of an RCD, an international (EU) design, or an international (EU) trade mark.

Where an injunction in place at exit day prohibits actions in the UK which would infringe an existing RCD or international (EU) right, the terms of that injunction will be treated as if they also apply to the re-registered design or comparable trade mark.

Licences, security interests and assignments

On exit day, you may hold a registered Community design (RCD), protected international (EU) design, or protected (EU) trade mark which is subject to a licence or security interest, and that licence or security interest may authorise actions in the UK which would otherwise infringe the RCD or international (EU) right.

Subject to any specific conditions it may require, the new law confirms that such a licence or security interest will continue to have legal effect in the UK.

Any licence or security interest that refers to an RCD or international (EU) right and authorises acts in the UK will therefore be treated as if it applies to the re-registered design or comparable UK trade mark.

It is important that you notify any licensees of the new right. You should check that the creation of the new right does not breach any agreement.

UK law does not require that transactions are registered per se. However, licences and security interests which are registered at IPO within a period of six months after the date of their being entered into provide certain protections which do not apply to unregistered transactions.

These protections assist people with an interest in the design or trade mark and those seeking full relief for infringement, and they are largely dependent upon proof that an application to register a transaction has been made.

We recognise that applications to register licences and security interests relating to re-registered designs and comparable trade marks cannot be submitted before those rights are created.

Where a licence or security interest is already registered in the EU and/or international registers before exit day, we will extend the period within which such transactions must be recorded on the UK register. The extended period will run to 12 months from exit day.

Where an RCD or international (EU) right has been the subject of an assignment prior to exit day which has not been recorded in the International Register, the assignor or the assignee will have the right after exit day to apply to record the re-registered design or comparable trade mark in the name of the assignee.

Rights of representation

After Brexit, the current rules relating to rights of representation and address for service will continue.

Many holders of RCDs and international (EU) designs and trade marks will be represented by IP legal professionals based outside of the UK.

Businesses, organisations or individuals that have design applications or registrations at the EU Intellectual Property Office and have appointed UK based representatives to act on their behalf, should check the following notices published by the EU Intellectual Property Office:

  • Notice to holders of and applicants for European Union trade marks and to holders of and applicants for Community designs, and
  • Part D of FAQ: ‘Impact of the United Kingdom’s withdrawal from the European Union on the European Union trade mark and the Community design’.

They may also want to consider speaking to their current representative to find out what arrangements they have in place.

Re-registered designs and comparable trade marks will inherit the representative details that are recorded against the EU and international (EU) rights.

Those representatives will be able to continue acting before the Courts and the IPO in any proceeding relating to the equivalent UK right derived from the RCD or international (EU) design or trade mark.

At this point in time, the current rules relating to rights of representation and address for service will continue.

Therefore, representatives based in the UK, Channel Islands or an EEA member state will continue to have rights of representation before the IPO.

There will be occasions where EUTM rights holders are based outside the EEA and have no representation. We will not require you to appoint an EEA address for service at Brexit. However, if any proceedings are taken on or against the case, we will write to you and ask you to file an address for service in the EEA before any proceeding can continue.

Notifications about changes for rights holders and how to opt out

We will publish a website notice in all languages of the EU. This will confirm that any holder of a registered Community design, international (EU) design or international (EU) trade mark registered or protected prior to exit day will, on and after exit day, also become the holder of a re-registered UK design or comparable UK trade mark.

This notice will provide a short summary of information relating to the UK right, including information on how to opt out.

Published 18 October 2019