Starting June 13, should you check the “GB” box in your Hague application in addition to the “EM” box?

On June 13, 2018 it will commence being possible to check the “GB” box in addition to checking the “EM” box when you file a design application in the Hague system.  Should you actually do so?

By way of background, until now, the filer of a Hague design application could check the “EM” box and this would lead to possible design protection in the EU.  This would, of course, extend to the UK by virtue of UK’s membership in EU.  But then Brexit was announced.  At some future point, if the Brexit transition were to reach its conclusion, checking the “EM” box would no longer lead to design protection in the UK.

The announcement in June of 2016 that the UK planned to leave the EU (“Brexit”, blog article here) meant that it was going to be helpful for the UK to join the Hague Agreement.  And indeed the UK joined the Hague Agreement on March 13, 2018 (blog article here).  Meaning that commencing on June 13, 2018 it will be possible for a Hague filer to check the “GB” box.

But just because you can check the “GB” box commencing on June 13, 2018, should you actually do so?  The answer is “maybe not right away”.

The reason for this is that barring some surprise, the UK will take steps so that registered community designs that were registered prior to Brexit will remain in force in the UK even after Brexit.  You can see this here.

So for example if you were to check both the “EM” box and the “GB” box on a newly filed Hague application on (say) June 14, 2018, you would be paying designation fees for both check boxes.  The Hague application would go through the examination and/or registration process in both Offices, potentially leading to granted protection in both places.  Then, assuming that indeed the Brexit reaches its conclusion, and assuming that the present plan (that RCDs in effect on that day will remain in effect in the UK) has its effect, you would end up with duplicate protection in the UK.

I expect that the UK will further provide that in the event of such duplicate protection, only one of the protections would actually be legally effective.

I suppose a filer might choose a “belt and suspenders” approach by checking both boxes.  After all, what if some unexpected hitch were to arise in the examination and/or registration process in one Office and not the other?  Or what if some unexpected hitch were to arise in the announced transition process by which pre-Brexit RCDs will remain in force in the UK after Brexit?  In either event the filer might be glad that it had checked both boxes.

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