World Intellectual Property Office publishes “explainer” on implications of a no-deal Brexit on international applications and registrations under the Madrid system

HomeInsightsWorld Intellectual Property Office publishes “explainer” on implications of a no-deal Brexit on international applications and registrations under the Madrid system

The document explains that international registrations, where the EUIPO is the Office of origin, held by UK nationals or legal entities without entitlement through another Member State of the EU, would not be affected in the event of a no-deal Brexit, because, at the time of filing the applicant would have met the entitlement requirements in respect of the EU. International registration proprietors would therefore continue to have the right to file any request for recording, including a request for the recording of a subsequent designation, directly with the International Bureau of WIPO. While the UK could be designated in those international registrations, a designation of the EU would not be possible due to Article 3bis of the Protocol. The EUIPO would remain the Office of origin.

Similarly, international applications filed through the EUIPO, as the Office of origin, before exit day, by UK entities without entitlement through another Member State, would also not be affected in the event of a no-deal Brexit. The EUIPO would therefore certify the application to WIPO, as long as the applicant met the entitlement requirements as at the date of filing. The EUIPO would also remain the Office of origin.

As from exit day, however, UK entities without entitlement through another Member State would no longer be able to file international applications through the EUIPO as the Office of origin. UK entities will therefore have to file international applications through the UK Intellectual Property Office, as Office of origin. They will continue to be entitled to do so after exit day because the UK is a Contracting Party to the Protocol, independent from the EU.

Subsequent designations of the UK resulting from conversion that are requested through the EUIPO before exit day will also not be affected by a no-deal Brexit. The EUIPO would present the subsequent designation to WIPO in the usual way. However, subsequent designations of the UK will no longer be possible after exit day in the event of a no-deal Brexit. To read WIPO’s explainer document in full, click here.