BREXIT – EU trade mark and design records in WebTMS?

BREXIT – EU trade mark and design records in WebTMS?

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The situation:

Unless you’ve been hiding under a rock you will know that the UK is leaving the EU, aka BREXIT. Post BREXIT, registered EUTMS and RCD rights will no longer cover the UK. However, the UKIPO have agreed to automatically ‘clone’ these rights onto the UK Register post Brexit. Owners (or their representative) of pending EU rights who wish to extend that protection to the UK post BREXIT should file for a new UK application and claim priority from the pending EU right and there will be a nine-month window of opportunity from the ‘Exit’ date.

The ‘problem’:

Users of WebTMS (and other IP Records Management Platforms) need to ensure their IP platform truly reflects their IP portfolio post BREXIT i.e. with the sudden addition of a national UK record for every EU right they have AND that they do not miss out on the opportunity to file a UK application claiming priority from the pending EU right. Specifically put, this means the creation of a new UK record for every registered EUTM and RCD on your system – assuming the trademark holder has not opted out – see ‘The WebTMS Solution – point ‘7.’’ for more information in this respect.

DEAL or NO DEAL – Time frame is the only difference:

The situation described above is fundamentally the same in both the ‘DEAL’ or ‘NO DEAL’ situation, the only difference is the time frame. If there is a DEAL then the EU rights will stay in force in the UK until 31 December 2020, if there is NO DEAL then the EU rights will only stay in force in the UK until 29th March 2019 which means action is required a lot sooner….

The WebTMS solution:

WebTMS is working towards the following plan:

  • The creation of an automatic procedure to clone the registered EU rights thereby creating the comparable UK records in your account and as per the notice issued by the UK IPO on the 21st February 2019, the number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009.:
  • For clients on our hosted platform this will be entirely automatic
  • For clients who have installed WebTMS on their own servers, we will be in touch to provide an SQL script which automates the above.
  • We will also create a new deadline in the system named ‘Brexit – Priority Deadline’ and we will include guidance on adding this to your pending EU rights in our March Webinar:
  • WebTMS will create a home registration link from the UK record back to the EUTM record.
  • There will be no charge for the procedure as it is considered a legal update, for which we do not charge an additional fee.
  • The cloned record will not be counted against your total number of records managed in the system, therefore not increasing your current subscription cost.
  • We will include a BREXIT preamble on our next Webinar, due in March. Invites will be sent to all clients in the usual manner.
  • Opting Out – If you do not want WebTMS to assist you through this period (perhaps you have your own plans) please let us know otherwise we will assume you want our assistance as outlined above.

In Summary:

If you are a WebTMS user we are aiming to make this as smooth as possible and the records will be automatically created, there is no additional cost and we will also be addressing this in our March Webinar.