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Intellectual property and Brexit – Withdrawal Agreement offers some clarity

The draft Withdrawal Agreement between the UK and the EU has set out what has been agreed between the European Commission and the UK concerning how Intellectual Property rights granted under EU Regulations will be treated in the UK following Brexit.  Despite the uncertainty surrounding Brexit, the draft Withdrawal Agreement provides welcome clarity.

When it comes to intellectual property the Withdrawal Agreement echoes much of what the UK government had already said would happen in its “technical notices” in the case of a “no-deal” Brexit although of course the Withdrawal Agreement provides some important clarifications from the EU side as well. Our previous blog on this subject can be found here. We have set out some of the main points in the draft Withdrawal Agreement below.

All EU Trade Marks (EUTMs) and EU Design Rights registered before the end of the transition period will be protected in the UK without the need to make any application and without payment of any fee (but without prejudice to future renewal fees). The UK will make provision to protect EU Unregistered design rights existing before the end of the transition period.  Plant variety rights and geographical indications or designations of origin, (including traditional speciality or traditional term for wine) which are recognised by relevant EU Regulation on termination of the transition period will be recognised under UK law.

The proprietor of a validly registered EUTM will become the holder of a trade mark right in the UK, consisting of the same sign, for the same goods or services (the information to be taken from the records of the European Union Intellectual Property Office (EUIPO)).  This will take the date of filing or the date of priority of the EUTM and, where appropriate, any seniority previously claimed for a UK trade mark.  The ‘cloned’ registration will not be liable to revocation on the ground that the corresponding EUTM had not been put into genuine use in the UK before the end of the transition period.  The proprietor of an EUTM that has acquired a reputation in the EU will be entitled to rely in an action for trade mark infringement on a reputation acquired in the EU by the end of the transition period.  Thereafter the continuing reputation of that trade mark will be based on the use of the mark in the UK.

The UK will ensure that trade marks and designs protected for the EU under the international system before the end of the transition period are also protected for the UK.

Any Community Design registered and (in the case of those for which publication has been deferred) published before the end of the transition period, will become a registered design right in the UK for the same design, for a term at least equal to the remaining term of the corresponding Community Design. As with trade marks, these will take the date of filing or priority of the corresponding Community Design.  The holder of an unregistered Community Design right which arose before the end of the transition period shall become the holder of an enforceable intellectual property right in the UK that affords the same level of protection as that provided in respect of the corresponding unregistered Community Design right.  This will last for a term of protection at least equal to the remaining period of protection of the corresponding unregistered Community Design.

The holder of a Community plant variety right will become the holder of a plant variety right in the UK for the same plant variety, which will take the date of filing or date of priority of, and have a term of protection, at least equivalent to the corresponding Community plant variety.

Any person entitled to use a geographical indication, designation of origin, traditional speciality or traditional term for wine guaranteed by or within the meaning of a relevant EU Regulation protected in the EU on the last day of the transition period shall be granted at least the same level of protection under the law of the UK as under the relevant provisions of EU law.

The registration, grant, or protection discussed in the withdrawal agreement is to be carried out free of charge using the data available in the registries of the EUIPO, the Community Plant Variety Office and the European Commission.  Holders of the relevant intellectual property rights referred to will not need to make an application to get the new right (or, indeed, be required to have a correspondence address in the UK in the three years following the end of the transition period).

There will be continued protection for databases the rights in which arose before the end of the transition period, the term of protection of that right to be at least equal to the remaining period of protection for the corresponding right.

There is one important apparent anomaly. Applications for EUTMs pending at the end of the transition period will not be granted corresponding UK protection as a matter of course.  Instead, provided the application has been accorded a filing date, the applicant will have 9 months from the end of the transition period to file a UK application corresponding to the EUTM application.  The new UK application will be deemed to have the same filing date and date of priority as the corresponding EU application, and, where appropriate, the seniority of a UK trade mark.

Applicants for a Community plant variety right which is pending at the end of the transition period, will have an ad hoc right of priority in the UK during a period of 6 months from the end of the transition period, which shall be deemed to be the date of application for a plant variety right in the UK for the purpose of determining distinctness, novelty and entitlement to the right.

Intellectual property rights which were exhausted both in the EU and in the UK before the end of the transition period will remain exhausted both in the EU and in the UK.

Finally, it has been confirmed that person who is qualified to act before the EUIPO who was representing a party in proceedings prior to the end of the transition period, may continue to represent that party in that procedure in all stages of the procedure before the Office.

You may also be interested in our previous blogs about Brexit and IP rights which can be found at the following links:

Eric Ramage is a UK Chartered Trade Mark Attorney and representative before the EUIPO and is of Counsel in Edwin Coe’s IP department.  He helped lobby for the introduction of the EUTM, has been a Council Member of the European Communities Trade Mark Association since 2007 and is a member of its Brexit Committee, and helped draft ECTA’s position paper to the European Commission on that subject.

If you wish to discuss this topic further, please contact Eric Ramage, or any member of the Edwin Coe Intellectual Property team.

Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.

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