Brexit

Much has been written about what will happen to EU-wide IP rights after Brexit—and whether, and how, the protection given by those rights will be maintained in the UK. Finally, we have some clarity about what is going to happen.

On March 19, 2018, the European Commission published an updated version of the “Draft Agreement on the withdrawal of the [UK] from the [EU].” This draft Withdrawal Agreement is color-coded, with terms that have been agreed by the negotiators (and which are subject only to technical legal revisions) shown in green.

Some of the green terms relate to EU-wide IP rights, specifically: European Union trademark (EUTM) registrations, registered community designs (RCDs), unregistered community design rights (UCDs), database rights, and granted community plant variety rights (CPVRs). Applications for such rights are also dealt with, as are international registrations of trademarks designating the EU.

It should be noted that we do not know when these rights will cease to have effect in the UK. The draft Withdrawal Agreement does not refer to a specific date, but instead refers to “the end of the transitional period.” This is because it has been agreed there will be a transitional period, until at least December 31, 2020, so that EU-wide rights will give protection in the UK long after the March 2019 “Brexit” date. The end of the transitional period is referred to as the “relevant date” below.

The draft Withdrawal Agreement confirms that all EUTM registrations, RCDs and CPVRs will automatically become “a comparable registered and enforceable intellectual property right in the UK” at the relevant date “without any re-examination.” It is also confirmed that the owners of UCDs will own an equivalent UK right for the remainder of the three years of protection given by their UCD.

Further, it is confirmed that the filing or priority dates of the relevant rights are to be maintained for the UK rights, which will give protection for the same period of time as the EU rights they replace (so for registrations the renewal date will be the same as for the EU right).

Additional good news is that the new UK trademark registrations cannot be revoked for non-use because of a lack of use in the UK prior to the relevant date, meaning that use elsewhere in the EU which would have allowed for the EUTM to be maintained will be taken into account.

There is also a reference to the owners of new UK trademark registrations being able to rely on reputation acquired in the EU prior to the relevant data to enforce their rights in the UK, though of course after the relevant data only reputation in the UK will be taken into account.

Where there is a pending application for an EUTM or RCD at the relevant data, the owner will have nine months to file a UK application for such right, which will maintain the priority date of the EU right it replaces. For CPVR applications, a UK application can be filed within six months of the relevant data.

Where there is a pending cancellation action ongoing at the relevant data, the final decision in this action shall affect the new UK right as well, unless the grounds for cancellation do not apply in the UK. For example, an invalidity action against an EUTM registration based on earlier rights in Germany will not lead to the new UK registration being cancelled (as the German rights do not have effect in the UK).

While all of this is very good news for the owners of EU-wide IP rights, there are still a lot of things that need to be agreed upon. These include what is going to happen to geographical indications, protected designations of origin, traditional specialties guaranteed and traditional terms for wine. There is also the question of how the UK IP Office is going to cope when all the new UK rights need to be put in place, though there is plenty of time for that to be sorted out yet.

Finally, it is worth noting that this is still a draft. Nothing will become final and definite until all the terms of Brexit are agreed and the Withdrawal Agreement is signed off by all 28 EU member states. But at least we now have some clarity on what should happen to the EU-wide IP rights that owners rely on every day.

Mark Holah is a partner in Bird & Bird's Intellectual Property Practice, based in London. Mark is qualified as a solicitor in both the UK and Ireland and is also a chartered trademark attorney. He has been advising clients on intellectual property issues since 1994. His practice focuses principally on brand protection issues, both contentious and non-contentious.