CITMA: More Brexit clarity, but more still needed
The most important and informative documents setting out the proposals for the future protection of EU trademarks (EUTMs) and registered Community designs (RCDs) after Brexit were the February 2018 European Commission‘s Draft Agreement on the withdrawal of the UK from the EU, and the subsequent issue of the amended text highlighting the sections agreed by the UK government in March 2018.
The agreement sets out the terms on which UK and EU negotiators have reached a settlement regarding, inter alia, the extended protection of EUTMs, RCDs and unregistered Community Designs (UCDs). Absent, however, is the burning issue of rights of representation, which has been continually overlooked in Brexit discussions.
Professional associations, including the Chartered Institute of Trade Mark Attorneys (CITMA), have published position papers assessing the wider implications of the government’s Brexit strategy and have stressed the need for greater clarity on representation after the withdrawal date. In the midst of uncertainty on what lies ahead for UK and EU representatives, the draft agreement does, however, provide some certainty on the protection of EU-wide IP rights in the UK after Brexit.
The draft agreement refers to a “transition or implementation period” during which EU law will continue to apply in the UK. The Commission stipulates that the transition period will commence on March 29, 2019 and is due to end on December 31, 2020.
Equivalent rights
After the withdrawal date, all EUTMs and RCDs will automatically have, “without any re-examination”, an equivalent “registered and enforceable intellectual property right in the UK”. This should reduce the number of new UK applications that are being filed to mirror existing EUTMs and RCDs. Some applicants have been “double-filing” as a precautionary measure, but in light of this provision, it now seems to be an unnecessary manoeuvre.
The owner of a UCD will also own a comparable UK unregistered design for the remainder of the three-year period of protection from the commencement of the UCD. It is hoped that the UK government will enact legislation to mirror the protection of UCDs in the UK (since current UK unregistered design law is quite different from EU unregistered design law). Those who have obtained protection for international trademarks or designs designating the EU will be able to continue to benefit from such protection in the UK.
