Significant Development with respect to Brexit Withdrawal Agreement – What Does This Mean for Owners of EU Trade Marks and Community Designs?
Earlier this month we reported that the European Commission had published the draft Withdrawal Agreement between the European Union (EU) and the United Kingdom of Great Britain and Northern Ireland (UK).
With respect to intellectual property, one of the important proposals in the draft Withdrawal Agreement was the creation of "parallel" UK rights, without the need for re-examination, for owners of EU trade marks or registered Community designs, granted before the end of a transition period. The draft Withdrawal Agreement envisaged that the transition period would end on 31 December 2020.
On 19 March 2018, the UK and EU Commission announced that agreement has been reached on the vast majority of the provisions dealing with trade marks and designs.
Notably, it seems to have been agreed that holders of EU trade marks or registered Community designs, granted before the end of a transition period, will become holders of comparable rights in the UK without any re-examination taking place. As proposed, the transition period looks set to end on 31 December 2020.
Other elements that appear to have been confirmed are:
- If a EU trade mark or registered Community design is declared
invalid or revoked in the EU as a result of an administrative or judicial
procedure ongoing on the last day of the transition period, the
corresponding right in the UK shall also be declared invalid or revoked.
[That said, in a slight deviation from the original proposal, it appears to have been agreed that in cases where the grounds for invalidity or revocation of the EU trademark or registered Community design do not apply in the UK, the UK shall not be obliged to declare invalid or revoke the corresponding UK right.]
- The first renewal date for the newly created UK right will be the same as that of the corresponding EU right.
- Filing dates, priority dates and where applicable seniority dates will be preserved.
- Newly created "parallel" UK trade marks will not be liable to revocation on the ground that the corresponding EU trade mark had not been put into genuine use in the UK before the end of the transition period.
- Owners of newly created "parallel" UK trade marks will be able to
rely on reputation acquired through use of the corresponding European Union
trade mark in the EU before the end of the transitional period
[In a slight deviation from the original proposal, it appears to have been agreed that reputation after the transition period will be based on use of the right in the UK.]
- For registered Community designs, the term of protection for the "parallel" UK right will be at least equal to the remaining period of protection of the corresponding EU right.
- Persons who have obtained protection for trade marks or designs in
the EU pursuant to the Madrid system or the Hague system before the end of
the transition period shall enjoy protection in the UK.
[Notably, the requirement that persons have to have obtained protection by the end of the transition period is an advancement over the original proposal where it was envisaged that persons simply had to have designated the EU.]
- Holders of unregistered Community design rights that arose before the end of the transition period will become the holder of a "parallel" UK right which shall afford the same level of protection as that provided for under EU law for a term at least equal to that remaining on the corresponding unregistered Community design right.
- Persons who filed an application for an EU trade mark or registered
Community design before the end of the transition period shall have a right
to file a parallel application in the UK during a period of 9 months from
the end of the transition period.
[In the draft Withdrawal Agreement, this ad hoc priority right only applied to European Union trade mark applications and existed for 6 months rather than 9 months. The expansion to include Registered Community designs seems sensible.]
Whilst agreement of the above provisions represents a significant step forward, one area that was not agreed on during negotiations is the registration procedure for the aforementioned UK "parallel" rights.
The draft Withdrawal Agreement envisaged that the grant of a corresponding UK trade mark or registration of a corresponding UK registered design would be carried out free of charge by the UK and that the holder of the corresponding EU right would not be made to undertake any particular administrative procedure. The draft Withdrawal Agreement also envisaged that rights holders would not be required to have a correspondence address in the United Kingdom. None of these provisions appear to have been agreed on thus far.
Of course at present the text is still in draft. Updates will be published on this site when known.