05/03/2018
We summarise what it has to say about those Intellectual Property rights which at the moment cover the whole of the EU, and therefore the UK. We’ve previously heard views on how things will continue after Brexit. We now have the Commision’s view that disruptions are to be minimized.
What is the draft agreement?
It translates into legal terms the Joint Report from the negotiators from both the EU (the rest of) and the UK Government. It has to cover a lot, from citizens’ rights to the financial settlement and the issue of the border between Northern Ireland (part of the UK) and the Republic of Ireland (a separate EU member). There are 168 Articles in the Agreement. 8 relate to Intellectual Property.
What happens next?
The EU Council and the European Parliament’s Brexit Steering Group will discuss it. It will then be sent to the UK for negotiation. The UK press have already reported some comments from the UK Government. The next meeting is March 22nd and 23rd. The Council is expecting the UK to provide further clarity on its position on the framework for the position moving forwards. We’ll keep you informed as soon as we know more.
So, this is not final yet. But the clock is ticking.
The UK will leave the European Union on 30 March 2019.
Looking at the IP provisions, first is to ensure protection in the UK is maintained.
At the moment, a holder can have a pan-EU trade mark registration, a pan-EU registered design or a pan-EU plant variety right, covering all 28 present member EU states. It’s a single right. This is not the position with patents and the European Patent system is not affected by Brexit.
If the trade mark or design was granted before *the end of the transition period* (as yet undefined), it continues automatically to cover the UK. There will be no need to take any action. No fees are due. No UK address for service is required. The UKIPO will not re-examine the validity of the right. There will be created a “comparable right”.
There are also EU geographic indication rights, protected names, designation of origin rights created under a bundle of different EU Regulations and if the right has been obtained under any of these rules, the UK will provide for at least the same level of protection in the UK.
What if that right was under a validity challenge which was ongoing at the end of the transition period? And the challenge is ultimately successful, knocking out the newly created “EU-27” (without the UK) right? What happens to the newly created “comparable UK right”?
It dies too. It doesn’t become independent.
How will the UK comparable right be renewed?
The UKIPO renewal fees take over at the time the EU-27 right falls due. At that time, the EUTM or EU registered design will be renewed at the EUIPO and the created UK right will be renewed separately at the UKIPO. A UK address for service may be required at renewal.
Does the new UK trade mark registration keep the original EU filing date?
Yes, as well as any priority date. And if the EUTM claimed seniority from an old UK registration wrapped up as part of the EUTM, the new UK registration will have that original UK date back.
Can the new UK trade mark registration be challenged for non-use on the basis that the mark of the registration has not been used in the UK before the end of the transition period?
No. Those new UK rights will continue for a while even if the holder is not and has not been active in using the mark in the UK.
What if the holder’s mark has reputation in much of the EU but not the UK? Does any of the that reputation carry over into the newly created UK registration?
Yes. Reputation in the Union is relevant and won’t at the outset be removed from the holder if they want to take action in the UK against anyone exploiting the fame of the right in the Union.
For registered designs and plant variety rights are there similar terms?
Yes. Renewal will be due as and when the EU-27 right falls due for renewal. The filing and priority dates are maintained.
And supplemental protection certificates?
They haven’t been forgotten either.
What happens if the EU protection was under one of the international registration agreements: Madrid for trade marks or Hague for designs?
The UK is required to make similar provisions for continuation of the right by way of a UK designation which is granted protection automatically.
But what if the holder doesn’t want such a cloned UK right?
The agreement does not alter the holder’s ability to surrender the right under UK law.
There are unregistered EU rights – an Unregistered Commuity Design. The overlap between that and a UK Unregistered Design Right is already complicated. Is it about to get worse?
Possibly. Again, if you qualified for one of the unregistered Community (EU) designs before the end of the transition period, you have a comparable right in the UK afterwards. So that’s going to sit alongside your unregistered UK design.
And database rights?
Same pattern, the creation of a comparable UK right.
But what if my trade mark application was pending before the EUIPO at the relevant date? Above, it’s all about the granted existing rights.
If an EU trade application is filed before the end of the transitional period, there will be a six month period from the end of the transition period to refile in the UK backdating to the EUIPO filing date. It will be interesting to see how that idea develops. This will impose on the applicant a requirement to meet a deadline. It doesn’t just apply to relatively new filing programmes where applicants might have chosen to put in the separate UK national right from the outset. What if the EU application was filed years ago and is still under opposition? All pending EUTMs will have to be reviewed by the applicant.
A similar provision applies to plant variety rights.
There is nothing on design filings in this section.
The draft mentions a “transition period”. Is there more information on that yet?
Full certainty on what that means and how long it will be will only come once the Withdrawal Agreement has been fully ratified by both the EU and the UK. It is expected that negotiations on this part will intensify over the coming weeks. The UK have already requested a period of “about 2 years”. There is talk of this ending December 31st 2020, but watch this space.
And finally, a word on exhaustion
Exhaustion of rights means that if the holder of the intellectual property right put products on the market in the EU, that holder can’t then stop the goods flowing freely throughout the EU. What will happen after the end of the transition period? Can the holder stop goods crossing into the UK because it is no longer part of the EU? No. If the rights were exhausted before, they are to remain so for both the EU and the UK after the end of the transitional period.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
