At the time of writing, the UK Parliament is continuing to debate the terms upon which the United Kingdom and Northern Ireland will leave the European Union. In light of this, the deadline for the draft withdrawal Agreement to be signed, has been extended to 31 October 2019. Beyond this, providing ‘a deal’ is signed, a transition period will run up until end 2020.
Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change.
Trade Marks & Designs
Here are some key points to consider in anticipation of the post-Brexit proposals:
- All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.
- Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.
- To ensure you will have rights in the EU and the UK after Brexit, file any new Applications in the EU and the UK going forwards from this point.
- When filing IRs designating the EU; a separate UK designation should be added.
- Any EU renewals falling due prior to Brexit will encompass the UK.
- Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.
- For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.
- Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.
- Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.
Licenses and Security Interests
- Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.
Contracts and Agreements
- The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.
- Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.
- Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.
There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.
As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.
Whatever happens in the lead-up to and indeed after Brexit, 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 appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.