European Commission Draft Withdrawal Agreement Explicitly Addresses Intellectual Property Rights - What Does This Mean for Owners of EU Trade Marks and Community Designs?

On 28 February 2018, the European Commission published the draft Withdrawal Agreement between the European Union and the United Kingdom of Great Britain and Northern Ireland.

European Commission

Reassuringly, the draft Withdrawal Agreement explicitly addresses Intellectual Property and pleasingly confirms that the European Union is prepared to agree to continuous protection in the UK, by way of a corresponding UK right, for owners of an EU trade mark or a registered Community design, without the need for re-examination. Notably, the draft Withdrawal Agreement does not provide for continuance in the UK, by way of a corresponding UK application, of pending EU trade mark applications or pending applications for registered Community designs. For owners of pending applications, it appears that new applications may need to be filed.

EU Trade Marks

The draft Withdrawal Agreement states that the holder of an EU trade mark, granted before the end of a transition period*, shall, without any re-examination, become the holder of a comparable trade mark in the United Kingdom consisting of the same sign for the same goods or services.

The Withdrawal Agreement provides that the UK trade mark will enjoy the same filing date or priority date as the EU trade mark. The seniority of a trade mark of the United Kingdom will also be recognised.

Notably, the UK trade mark will not be liable to revocation on the ground that the corresponding EU trade mark had not been put into genuine use in the United Kingdom before the end of the transition period*.

Registered Community Designs

The draft Withdrawal Agreement states that the holder of a registered Community design shall become the holder of a comparable UK registered design for the same design.

The Withdrawal Agreement provides that the term of protection for the UK registered design will be at least equal to the remaining period of protection, under EU law, of the corresponding registered Community design.

As for trade marks, the UK registered design will enjoy the same filing date or priority date as the corresponding registered Community design.

EU trade mark and registered Community design applications pending at the end of the transition period

Interestingly, the draft Withdrawal Agreement provides that persons who filed an application for an EU trade mark before the end of the transition period shall enjoy an ad hoc right of priority in the United Kingdom during a period of six months from the end of the transition period*. The right of priority will mean that the UK application will have as the date of filing the priority date of the corresponding EU trade mark application.

No such ad hoc priority period seems to have been envisaged for persons who filed an application for a Community design before the end of the transition period*. This would suggest that applicants who wish to obtain protection in both the UK and EU for their designs should start to file parallel EU and UK design applications.

Registration Procedure

The draft Withdrawal Agreement states that the grant of a corresponding UK trade mark or registration of a corresponding UK registered design will be carried out free of charge by the UK and the holder of the corresponding EU right shall not be made to undertake any particular administrative procedure. The Agreement also states that rights holders shall not be required to have a correspondence address in the United Kingdom although it is envisaged that one may be required at the moment a renewal is due.

Of course, the UK has not agreed to this Withdrawal Agreement at present so this may change.

Revocation or Invalidity of a EU trade Mark or Registered Community design before the end of the transition period

The draft Withdrawal Agreement specifically states that where a granted EU trade mark or registered Community design is declared invalid or revoked as a result of an administrative or judicial procedure which was pending on the last day of the transition period*, the corresponding right in the United Kingdom shall also be declared invalid or revoked.

International registrations designating the EU

The draft Withdrawal Agreement states that persons who have designated the EU under the Madrid System for the international registration of trade marks or the Hague system for the international registration of designs before the end of the transition period* will enjoy protection in the UK.

Unregistered Community designs

Notably, the draft Withdrawal Agreement states that holders of unregistered Community design rights that arose before the end of the transition period* shall become the holder of a corresponding 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.

The draft Withdrawal Agreement will now be discussed with the European Council and the European Parliament's Brexit Steering Group before being transmitted to the United Kingdom for negotiation. Thus, the Withdrawal Agreement is subject to change. It is also possible that the UK will provide additional safeguards for owners of rights currently extending to the UK through an EU trade mark or a registered Community design. The nature of such UK originating provisions (if any) has not yet been disclosed.

Updates to the Withdrawal Agreement will be published on this site when known.

* According to the draft Withdrawal Agreement, the transition period will end on 31 December 2020, 21 months after the United Kingdom will leave the EU (NB: The United Kingdom will leave the EU on 30 March 2019).

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