The United Kingdom is scheduled to leave the European Union on the 29 March 2019. Whilst the precise terms of exit are yet to be agreed, in March 2018, the European Commission and the UK published the first draft of a Withdrawal Agreement. This is the most comprehensive document to date, although each of the proposals are open to further revision.
The Withdrawal Agreement touches on the post-Brexit administration and scope of EU intellectual property rights, including EU Trade Marks (EUTMs) and Registered Community Designs (RCDs).
The proposed Transition Period:
The Withdrawal Agreement provides that the transition period will end on 31 December 2020. It is envisaged that during the transition period i.e. from 29 March 2019 to 31 December 2020, the applicable European Union law will still be effective in the United Kingdom. Consequently, EUTM and RCD rights will continue to be valid and enforceable in the United Kingdom until at least 31 December 2020.
In addition, UK IP practitioners will retain their rights of representation before the European Intellectual Property Office (EUIPO) until at least 31 December 2020.
Points of agreement:
In terms of existing EU intellectual property rights, both sides have voiced the intention to create equivalent “cloned” UK rights, with the same filing, and priority dates and with no examination required. The proviso is that the rights in question are granted or registered before the end of the prescribed transition period.
“The holder of any of the following intellectual property rights [EUTMs/RCDs/Plant Variety rights] which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom.”
Points of uncertainty:
What currently remains unclear, is the administrative procedures that will be put in place to transform and/or extend EU IP rights by the end of the transition period.
For trade mark rights that are pending at the end of the transition period, the owners will be allowed nine months to request a transfer and re-examination to the UK IPO, in order to retain the original filing and/or priority dates. This is very likely to incur an additional fee, and an inevitable delay in protection being granted.
A separate issue also to be addressed is the entitlement to representation at the EUIPO for UK practitioners, in a manner that will give reassurance to UK based rights-holders that they can continue to trust in the professional relationships that have been established.
The draft agreement remains silent in respect of unregistered designs. At present, the UKUDR is not a comparable replacement for the European UCD.
For IP rights holders, as the months towards Brexit and the end of transition pass, seeking to secure separate UK and EU trade mark and design protection from the outset, is recommended. Whilst there are some reassurances that granted rights will be ‘cloned’, there is currently no parallel comfort being offered for pending applications.
Whatever the outcome of the Brexit negotiations, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.