April 1, 2019

The explanatory note covers the draft Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019. If this statutory instrument is approved by the UK Parliament, it would provide for continued protection in the UK for marks in international applications and registrations under the Madrid System in which the European Union (EU) has been designated in the event of a “no deal” Brexit.

WIPO’s document provides information to make Madrid System users aware of how their rights would be preserved in the UK and how to safeguard those rights in a “no deal” scenario.

The document explains that in general terms, the solutions provided in the draft statutory instrument would result in a new independent UK right which would benefit from the date of the earlier designation of the EU. This new independent UK right would be governed exclusively by UK law; that is, it would no longer be governed by the Madrid Protocol.

However, in most cases, holders could regain the advantages provided for by the centralized management features of the Madrid System by subsequently designating the UK in their international registrations, which would then replace their newly independent UK rights.

The document covers four scenarios:

• designations of the EU in which the mark is protected before exit day;
• designations of the EU pending before exit day;
• pending transformation applications filed with the EU before exit day; and
• provisions for international registrations that expire within six months before exit day.

To access the explanatory note, click here.