The Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community ('draft agreement') was - finally - published on 14 November 2018. The draft has been endorsed by the UK Cabinet but will require approval in the House of Commons and it could meet with stiff opposition. The draft agreement also contains provisions which impact upon certain IP rights, including trade marks and designs.
Overall, the draft agreement provides welcome clarifications with respect to EU-law based IP rights and allows for a smooth transition and an end-point that is as close to the status quo as could be hoped for. Most notably it provides for a continued protection in the UK of EU trade marks. Of course, the biggest risk at present is whether the UK Parliament will approve the agreement in its current form.
Withdrawal Agreement - Trade marks and designs
Below is a summary of the main impact of the draft agreement, should it be approved by Parliament.
Existing registered or granted rights
- The UK government will grant owners of European trade marks (EUTMs) and Registered Community Rights (RCDs), which were registered or granted before the end of the transition period (currently 30 March 2019 to 31 December 2020), a new UK equivalent trade mark right, in effect a "clone" of the EUTM or RCD, with no action necessary or cost incurred on the part of the holder.
- These "cloned" rights will not be re-examined by the UK IPO, and they will enjoy the date of priority of the EU registration, including any UK seniority claim for trade marks.
- The renewal date of the cloned UK trade mark registration will be the same as the corresponding EU trade mark registration.
- The cloned UK trade mark registrations will not be liable to non-use revocation if the corresponding EU trade mark registration had not been put to genuine use in the UK before the end of the transition period.
- The cloned UK registrations will, however, be linked to the relevant original EU registration in so far as the EU registration is revoked or invalidated as a result of proceedings which were ongoing at the end of the transition period, unless the grounds for such an attack do not apply in the UK.
- Owners of EUTMs which have acquired a "reputation" in EU, will (only) be able to rely upon this reputation until the end of the transition period, after this point reputation will have to based upon use in the UK.
- A UK address for service will not be required for the cloned UK registration for three years after the end of the transition period.
- For International trade mark registrations under the Madrid system, which designate the EU and which have been registered prior to the end of the transition period, the UK Government agrees to take measures to ensure continued protection in the UK. Since its implementation is not dependant on working with the World Intellectual Property Organisation but will be decided by the UK Government, this provides rights holders with a seeming guarantee of continued protection of the UK part of their existing EU designation of an International trade mark registration, which they may not have had in a no-deal scenario.
- Existing EUTMs and RCDs will continue to be valid in the EU27 after the end of the transition period.
- Unregistered Community Design rights that exist at end of transition period will continue to be protected and enforceable in the UK for a term of protection at least equal to the remaining period of protection of the relevant Community right. While there is a separate unregistered UK design right under the Copyright Design and Patents Act 1988, this is a different type of right to the unregistered Community Design right and the UK currently has currently no equivalent unregistered design right. The UK Government would therefore have to UK to implement new legislation to implement this requirement.
- Holders of geographical indications which are protected in the EU by the end of the transition period are entitled to use the geographical indication in the UK, without re-examination and will be granted "at least the same level of protection" as provided under the existing EU regime. However, this will apply only "unless and until" a future agreement between the EU and the UK enters into force and becomes applicable.
Applications pending at the end of the transition period
- There will be a nine month period after the expiry of the transition period for owners of pending EUTM/RCD applications to apply in the UK for the equivalent protection. These re-filed applications will retain the priority dates (including UK seniority for trade marks) from the corresponding EU application. No automatic notifications of this fact will be issued by the UK IPO and any re-filed applications will attract the same fees as UK national applications.
Exhaustion of rights
IP rights will remain exhausted for all goods which have been put on the market anywhere in the EEA before the end of the transition period.
Representation in ongoing proceedings before the EUIPO
Authorised representatives in all ongoing proceedings before EUIPO commenced before the end of the transition period may continue to represent the relevant party for all stages in that procedure, including appeals. However, there is currently no clarity on the rights of UK representatives to act before the EUIPO in new cases post Brexit.