Consequences of Brexit for BOIP procedures: an update

As the scenario of a "no-deal" Brexit seems to become more likely, it becomes time to consider in more detail, in addition to our previous communications, the (potential) impact on BOIP procedures.

The only condition to act before BOIP is that the party performing the activity must have a "residence or registered office" within the European Economic Area (EEA). This is governed by Rule 3.6 IR:

  1. All activities at the Office or a national administration may be performed through the intermediary of a representative.
  2. The representative’s place of residence or registered office should be located in the European Economic Area.
  3. All communications concerning these activities will be addressed to the representative.
  4. Any party that does not have a place of residence or registered office, or has not appointed a representative within the European Economic Area, is required to provide a correspondence address in the European Economic Area.

Thus, if the United Kingdom (UK) were to leave the EEA on 31 October 2019, the consequence would be that UK parties (trade mark or design proprietors or their representatives whose residence or registered office is in the UK) would no longer be able to act before BOIP after that date.

Performing activities within the meaning of Rule 3.6 IR implies an action. It is therefore not required that after 31 October 2019, for all pending files where the BOIP contact point is a UK party, the registry details be modified and a new representative or correspondence address be recorded. It is only at the time when an action is actually carried out that the requirement of a place of residence or registered office within the EEA applies. If that time is after 31 October 2019, BOIP will note that this requirement has not been met and, if applicable, will set a time limit for the party who carried out the act to remedy this deficiency. Failing this, the activity in question will be deemed not to have been carried out.

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