It has been a busy month for Brexit developments, which has seen the Prime Minister’s Chequers meeting proposals, and the resignation of the Secretary of State for Exiting the European Union and the Foreign Secretary as a result. The government also published a White Paper on the future relationship between the United Kingdom and the European Union, which contained explicit references to both Geographical Indications and the Unified Patent Court.
Amongst this activity, there has been a notable development in relation to trade marks and specifically, confirmation of how the UKIPO intends to treat existing EUTMs and RCDs post-Brexit. In sum, the UKIPO has confirmed that the UK will protect all existing EU trade marks and registered Community designs when the country leaves the EU. Such protection, involving the transfer of 1.5 million rights, will be automatic and involve no official fee.
The UKIPO’s comments stem from a July 19 Commons debate on ‘Exiting the European Union’, during which Lisa Cameron, Scottish National Party MP and chair of the all-party parliamentary group for textiles and fashion, asked what steps the UK government is taking to ensure that intellectual property rights in the creative sector are maintained. In response, Robin Walker, parliamentary under-secretary of state for exiting the European Union, confirmed:
“UK-owned trade marks and design rights in the EU27 will be unaffected by our withdrawal. Meanwhile, we have agreed to protect all existing EU trade marks, community-registered designs and unregistered designs in the UK as we leave the EU. In place of those EU-level rights, 1.5 million new UK trade marks and registered designs will be granted automatically and for free.”
That EUTMs would continue to be recognised in the UK post-Brexit, and that there would be some form of arrangement by which they were entered onto the UK Register, is of course nothing new (this exact arrangement was one of CITMA’s proposed models – The Montenegro Model – published in its working Brexit paper as far back as 19 August 2016). What is new, however, is the UK Government’s confirmation as to how this would work in practice. The arrangement has since been confirmed by the UKIPO. Speaking to World Trademark Review on 23 July, a UKIPO spokesperson confirmed:
“[s]ubject to agreement of the Withdrawal Agreement, we will continue to protect all existing registered European Union Trade Marks, registered Community designs, and unregistered Community designs as we leave the EU. We will do so by creating over 1.7 million comparable UK rights, which will be granted automatically and free of charge. In terms of the White Paper, as the Minister has stated, there are significant mutual benefits available to the UK and EU through intellectual property cooperation. For that reason we are seeking to explore arrangements on cooperation on IP with the EU, where this is consistent with the UK’s overall approach as set out in the White Paper.”
The clarity of the UK Government’s position on this issue is something of a refreshing change from the more opaque announcements regarding Brexit generally and the ratcheting up of political rhetoric in relation to the ‘no deal’ scenario. It remains to be seen whether the above will apply in the event of a ‘hard Brexit’ (the UKIPO’s statement above would seem to suggest that the arrangement was subject to the Withdrawal Agreement being agreed by both sides). However, the UK Government’s apparent willingness to reach an early compromise in relation to the post-Brexit position on trade mark rights should hopefully set a good precedent for negotiations on the treatment of UK rights in the EU.
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.