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Brexit- Draft Withdrawal Agreement Provides Clarity for Trade Mark and Design holders

Brexit- Draft Withdrawal Agreement Provides Clarity for Trade Mark and Design holders

20/03/18

 

Since the referendum result it has been difficult to advise with any certainty as to the impact that the UK’s withdrawal from the EU is likely to have on EU trade mark and Community design rights. However, the latest Draft Withdrawal Agreement has seen a number of key Articles associated with trade mark and design rights post Brexit provisionally agreed, as well as confirmation of a transition period which will begin on 29 March 2019 and end on 31 December 2020.

On 19th March the UK and EU provisionally agreed on a number of elements of the UK’s withdrawal from the EU, as outlined in the latest Draft Withdrawal Agreement which can be found here. It is important to note that until all aspects of the Agreement are agreed it remains in draft. However the sections presented in green are those that have been provisionally agreed.

What happens before 31 December 2020?

Until the end of the transition period existing EU trade mark registrations and Community design registrations, and applications which proceed to registration before the end of 2020, will be protected and remain enforceable in the UK.

What happens after 31 December 2020?

Registrations

It has been agreed that the holder of an EU trade mark registration or Community design registration, registered before 31 December 2020 will, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the UK. It has also been agreed that the UK shall take measures to ensure that international registrations for trade marks or designs designating the EU and registered before the end of the transition period will enjoy protection in the EU.

The section of the Draft Withdrawal Agreement on the specific procedure for registration of comparable rights in the UK has yet to be agreed. It currently states that no fee will be incurred and no action will be required by the rights holders themselves. We believe that this would be the most practical, efficient and clear approach, and it is the approach which the IP industry has sought to secure.

Applications

The holder of an application for an EU trade mark or Community design which is pending at the end of the transition period shall be entitled to file a UK application for the same trade mark for identical goods or services, or for the same design, during a period of nine months from the end of the transition period. Any UK application filed during this “priority” period will enjoy the same filing date and date of priority as the corresponding EU application.

Unregistered design rights

It has been agreed that the UK will provide that the holder of an unregistered Community design which arose before the end of the transition period will be granted an enforceable UK right affording the same level of protection for the remaining period of protection of the unregistered Community design. However, the manner in which this will be implemented by the UK Government is yet to be outlined.  

What does this mean for rights holders?

Rights holders should respond positively to confirmation that existing EU trade mark and design registrations will be protected via comparable UK registrations created after the end of the transition period. Confirmation of the transition period itself will allow rights holders to prepare more effectively and the priority period for pending applications will also enable rights holders to build the impact of Brexit into their filing strategies with more clarity.  

We would stress that decisions as to whether to file EU and UK applications before the end of the transition period should still be assessed on a case by case basis as there may be circumstances relevant to rights holders which mean that protection via an EU and UK registration should be considered.

We will continue to monitor the situation, as if a final agreement is not reached further guidance will need to be provided. We will also provide further updates on the registration procedure for corresponding UK registrations once that is agreed, and on the manner in which Community unregistered designs will be mirrored in the UK.

We are happy to discuss any enquiries you may have in more detail as well as provide more definitive advice based on specific circumstances. Please do not hesitate to contact us with any questions.