www.lexpert.ca/usguide | LEXPERT • June 2018 | 45
for example, registration may be precluded
because of temporal limitations. "The usu-
al requirement is that designs must be reg-
istered within a year of their publication,
so it could already be too late for some ap-
plicants," Fuhrer notes.
Otherwise, because design registration
in Britain depends on novelty, there's an
argument that designs already protected
by the EUIPO do not meet this require-
ment. And since, arguably, EUIPO pro-
tection lapses following Brexit, regard-
less of whether a rights holder registers
in the UK or not, former EUIPO-cov-
ered IP owners may not be able to seek
damages for violations that occurred in
Britain before Brexit.
Compounding the uncertainty is the
fact that no plan for dealing with these
issues has emerged. "Trademark and de-
sign protections are creatures of EU legis-
lation, all of which will be left in limbo
if the UK simply repeals these laws by
withdrawing," says Mark Davis, a partner
and trademark agent in Norton Rose Ful-
bright Canada LLP's Toronto office.
"But the prevalent thinking is that
the UK will enact legislation that,
upon registration in the UK, will con-
vert the unitary EUrights into specific
rights in Britain."
Still, that may be more complicated
than it sounds. For example, trademark
registration generally requires applicants
to demonstrate that the mark has been
used in the jurisdiction. Current EU law
deems that using a trademark anywhere
in the EU constitutes use across the
union. "Following Brexit, however, what
happens to that trademark?" Davis asks.
"Does the deemed use in the UK still ap-
ply for purposes of UK registration? It's
all up in the air."
IP owners, it seems, have two options:
wait out the negotiations and see what
happens, or register now.
Fuhrer believes that rights holders with
substantial interests at stake should be
proactive. "Any client really concerned
about established brands should think
about getting UK registration as soon as
possible," she says. "For new trademarks
and designs, simultaneous applications in
the EU and the UK are probably the best
way to go."
Pure contractual issues are also loom-
ing. For example, licenses and assign-
ments may make territorial reference to
the EU, raising the question as to whether
the UK will still be within the scope of
