European Commission drafts Brexit Agreement which deals with EU IP rights

While the UK government dithers over any Brexit-related decisions, the European Commission has released its version of a draft Withdrawal Agreement.  The full document can be found here: https://ec.europa.eu/commission/sites/beta-political/files/draft_withdrawal_agreement.pdf  Buried within a vast array of diverse issues are Articles relating to EU intellectual property rights.  These provide some seemingly sensible and practical details of how this transition will affect EU IP registered rights:

  1. The holder of an EU trade mark, a Registered Community Design or a Community plant variety right which has been registered or granted before the end of a transition period (ie before 31 December 2020) shall, without any re-examination, become the holder of a comparable registered UK IP right.
  2. Replacement UK IP rights will have the same date of filing or priority of the corresponding EU IP right and, where appropriate, the seniority of a UK trade mark.
  3. The replacement 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 territory of the UK before the end of the transition period.
  4. The owner of an EU trade mark having a reputation in the EU will be allowed to exercise equivalent rights in the UK to those provided for on the basis of reputation acquired in the EU.
  5. A special right of priority shall be granted in the UK for the six months from the end of the transition period for those EU applications filed within the transition period but not achieving registration by the end of that period.
  6. The term of protection for the replacement UK registered design will be at least equal to the remaining period of protection under EU law of the corresponding Registered Community Design
  7. The holder of an Unregistered Community Design which arose before the end of the transition period will become the holder of a UK IP right in the UK resulting in the same level of protection as the equivalent EU right, with the term of protection of the UK right being at least equal to the remaining period of protection of the corresponding unregistered Community design.
  8. The owners of international trade mark or design registrations under the Madrid or Hague systems, who designated the EU before the end of the transition period, will enjoy protection in the UK for their trade marks or designs in respect of those international registrations.
  9. The registration or grant of a comparable UK trade mark registration, UK registered design or UK plant variety right will be carried out free of charge by the relevant entities in the UK using data available in the registries of the EUIPO, the Community Plant Variety Office and the European Commission.
  10. Holders of IP rights and those entitled to use the rights shall not be required to introduce an application or to undertake any particular administrative procedure.
  11. Holders of IP rights will not be required to have a correspondence address in the UK, although it is envisaged that an address for service in the UK will be required at the first renewal of the IP right concerned.
  12. If an EU trade mark, a Registered Community Design or a Community plant variety right is declared invalid, revoked or declared null and void or cancelled in the EU as the result of an administrative or judicial procedure which was on-going on the last day the transition period, the corresponding right in the UK will also be declared invalid or revoked, or declared null and void, or cancelled as appropriate.

Of particular practical note are:

  1. The holders of EU IP rights that are subject to on-going administrative or judicial procedures for invalidity or revocation at the end of the transition period are being advised to consider the fact that if they are unsuccessful, they will also lose their UK registrations as well as the EU registration.  It is expected that this will prompt the owners of important EU trade marks especially to file new corresponding applications in the UK sooner than later.
  2. There is no special priority period for filing new counterpart design applications in the UK.  This would suggest that applicants should now begin filing separate EU and UK registered designs if they want to be sure of protection in the UK, or they simply rely on unregistered design rights.As the UK government has been silent on this to date, these are particularly welcome and set out a common sense approach to the transition as the UK leaves the EU.  The main question that arises is will the UK really be willing to stomach the bill for this?  No doubt many months of wrangling will ensue.


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