UKIPO confirms plan for free conversion of EU trademarks to UK register

On 23 July the UKIPO confirmed that the United Kingdom will protect all existing EU trademarks and registered Community designs when the country leaves the European Union.

The confirmation followed a 19 July House of Commons debate (titled “Exiting the European Union”), at which Lisa Cameron, Scottish National Party MP and chair of the all-party parliamentary group for textiles and fashion, asked what steps the UK government is taking to ensure that IP rights in the creative sector are maintained. In response, Robin Walker, parliamentary undersecretary of state for exiting the European Union, revealed: “UK-owned trademarks and design rights in the EU27 will be unaffected by our withdrawal. Meanwhile, we have agreed to protect all existing EU trademarks, Community-registered designs and unregistered designs in the United Kingdom as we leave the European Union. In place of those EU-level rights… new UK trademarks and registered designs will be granted automatically and for free.”

That the conversion would be free of charge had not previously been announced. In a subsequent statement, a UKIPO spokesperson confirmed that “subject to agreement of the Withdrawal Agreement, we will continue to protect all existing registered EU trademarks, registered Community designs and unregistered Community designs as we leave the European Union. We will do so by creating over 1.7 million comparable UK rights, which will be granted automatically and free of charge. In terms of the White Paper, as the minister has stated, there are significant mutual benefits available to the United Kingdom and European Union through IP cooperation. For that reason, we are seeking to explore arrangements on cooperation on intellectual property with the European Union.” 

Counsel comment

Although political uncertainty remains, this commitment by the UK government is to be welcomed and removes one further piece of uncertainty over the management of IP rights in a post-Brexit world. What this announcement possibly also highlights is that the conversion of EU registered rights into national UK registered rights is under the sole control of the UK government, not the EU Commission. This was not an announcement by the EU Commission or a joint announcement by the UK government and the EU Commission, it was an announcement by the UK
government alone. I would contend this announcement means that registered EU rights will be converted for free into registered UK rights post-Brexit, whether there is an overall agreement with the European Union or not concerning Brexit, and whether there is a hard or soft Brexit, and that this process will be automatic.

Lee Curtis, HGF

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