Brexit – IP rights will continue to be applied in the UK

RCDRapisardi Intellectual Property Group, which has its offices in Switzerland, Great Britain and San Marino recently reported the following:

The European Commission published a first draft of the Withdrawal Agreement which contains the proposed terms on which the United Kingdom will leave the European Union on 30 March 2019.

This is not an agreed outcome but only a draft agreement which merely sets out the European Commissions’ desired position.

Therefore, whether the UK government will accept these proposals regarding these new UK intellectual property rights is not yet known.  Nevertheless, it seems likely that the UK will agree with the general principle that there should be no loss of these rights.

The draft of the Withdrawal Agreement points out the European Commission’s wishes for the management of the European intellectual property rights after Brexit, and in particular the EU trade marks (EUTMs) and the registered Community designs (RCDs).

Significant is that, the draft Withdrawal Agreement suggests a transition period during which the status quo would be preserved could be extended until or  beyond December 31, 2020.

More specifically:

During the transition period:

The European law will continue to be applied in the UK and any reference in the EU law to “Member States” will be understood as including the UK.  This means that the EU intellectual property rights, including EUTMs and Community designs (registered and unregistered) will continue to be applied in the UK which will be recognized and enforced by the UK courts.

During this transition period, UK attorneys and lawyers should continue to be able to exercise their representation rights before the EUIPO and the CJEU.

At the end of the transition period:

The draft of the Withdrawal Agreement stipulates that the holders of such rights, which have been registered or have been granted before the end of the transition period will, automatically and without any re-examination, be granted of a comparable registered and enforceable intellectual property right in the UK.

The TM will not be liable to revocation on the ground that the corresponding UETMs have not been put into genuine use in the UK before the end of the transition period.

The international TM designating the EU and the RCDs which have been registered before the end of the transition period will have protection in the UK.

The holders rights related to an unregistered design which arose before the transition period will have the same level of protection in the UK. The term of protection will be the same as the one granted be the EU.

If the applicant filed an application of a EUTM or a RCD under the EU law before the end of the transition period and if the application was accorded a date of filing, the applicant will have 9 months after the end of the transition period the right to file the same application in the UK and the filing date of priority will be the same as the EUTMs.

The holders of EUTMs which have acquired a reputation in the EU will have the same rights in the UK at the end of the transition period and after it the reputation will continue and the TM will be based on the use in the UK.

The rights which were exhausted both in the EU and in the UK before the end of the transition period under the EU law will remain exhausted under both EU and UK.

In conclusion, the EUTMs will no longer be extended to the United Kingdom.  However, the European Commission suggests that there will be no loss of protection for holders of EU intellectual property rights.

Therefore, the holder of a EUTMs would become the holder of a UK trade mark consisting of the same sign, for the same goods or services.

This will be applicable also to the holder of a RCDs designs who would become the holder of a registered UK design for the same design. To be noted that the same could be applicable to the  non registered Community designs.

The dates of filing or of priority, both for TM and RCDs, will be maintained the same. And, when appropriate the seniority as well.

The first renewal date of the new UK intellectual property rights will be the same as the renewal date of the corresponding EU right.

Regarding the rights of RCDs of limited duration, the potential duration of the new UK rights will be at least as long as the EU right on which they are based.

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Whether the UK government will accept the proposals regarding these new UK intellectual property rights is not yet known.  But it seems very likely that the UK will be in agreement with the general principle that there should be no loss of rights.

Of course, none of the above provisions will apply in the event that the EU and UK fail to conclude a Withdrawal Agreement and the negotiations are still in progress. Even if it appears that its highly unlikely that they will break down completely, it would nevertheless be prudent for intellectual property rights holders to plan for such an eventuality.