Draft EU Withdrawal Agreement – IP Provisions

On 14 November 2018, after months of negotiations, UK and EU officials agreed the draft text of an agreement on the UK’s withdrawal from the European Union. This includes provisions relating specifically to Intellectual Property, and the highlights are follows:

Existing registered EU trade marks and registered Community designs will be “cloned” onto the UK Registers

  • Whilst registered EU trade marks and registered Community designs will cease to be valid in the UK after the expiry of a transitional period (due to run until the end of December 2020), the UK will grant equivalent national rights in the UK, without any re-examination.
  • The Withdrawal Agreement confirms that the “cloning” of EU registered rights onto the UK Register will be carried out without the need for the owners of these rights to file any applications or take any other administrative steps.
  • The transposition of the EU rights onto the UK Register will not incur official fees.
  • The filing/priority dates of (and any seniority claims relating to) the EU rights will be maintained in the corresponding UK right. The first renewal date of the equivalent UK trade mark and design will correspond to the renewal date of the EU right from which the UK right arose.
  • The “cloned” UK trade mark created before the end of the transition period will not be subject to revocation on the ground that the corresponding EU trade mark had not been put to genuine use in the UK before the end of the transition period.
  • The owner of the equivalent UK trade mark will be able to rely upon the reputation acquired in the mark in the EU up until the end of the transitional period. Thereafter, any rights on the basis of reputation in the mark will need to be exercised on the basis of reputation acquired in the UK.

Option to “transpose” pending EU trade mark applications and Community design applications onto UK Registers on application

As envisaged in the case of a “no-deal Brexit”, EU trade mark applications and Community design applications pending at the end of the transitional period will not be automatically cloned onto the UK Registers, but the owners of these rights will have 9 months from the end of the transition period to apply to register an identical UK trade mark or design maintaining the filing/priority dates of the equivalent EU right.

International trade mark and design registrations

The Withdrawal Agreement also includes a commitment on the part of the UK to take measures to ensure continued protection in the UK of International trade mark and design registrations designating the EU in relation to which protection is obtained before the end of the transitional period. The Agreement does not include any provisions in relation to pending EU designations.

Unregistered Community designs

All unregistered Community designs which arise before the end of the transition period will also continue to be protected and enforceable in the UK for the remaining period of protection of the corresponding unregistered Community design. Since the UK law currently does not envisage the same level of protection for UK unregistered design as the EU regime, the UK will need to legislate in this respect.

Geographical Indications

The draft Withdrawal Agreement confirms that EU geographical indications, designations of origin or transitional speciality guaranteed, and traditional terms for wine, will remain protected in the UK “until the future economic relationship comes into effect and supersedes those arrangements”. Existing UK GIs will continue to be protected by the current EU regime.

Exhaustion of rights

The draft Withdrawal Agreement briefly states that IP rights which were exhausted both in the EU and in the UK before the end of transition period will remain exhausted both in the EU and in the UK. Goods will, accordingly, continue to move freely between the EU and UK during the transition.

Analysis of effect in UK

The provisions of the draft Withdrawal Agreement for the most part replicate the UK Government pledges in relation to IP rights in the case of a no-deal Brexit, but it is reassuring to see confirmation of the following:

  • That the status quo will remain until the end of transition period and that after the end of the transition period:
  • EU registered IP rights will be cloned onto the UK Registers;
  • Such cloned rights will retain the filing/priority/seniority dates of their EU equivalents;
  • The cloning process will incur no official fees for the IP rights owners.

The Withdrawal Agreement requires Parliamentary approval (and the matter is due to come before the House of Commons on Tuesday 11 December 2018). In the event that Parliament does not approve the agreement (and the EU/UK do not agree other arrangements), the UK will leave the EU on 29 March 2019 without an agreement. Our summary of the UK Government’s guidance notes on intellectual property in the event of a “no-deal” Brexit can be found here.

Please contact your usual CSY adviser if you have any questions about any of these issues.

By Magda Ostrowska

Posted on: 6th December 2018