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Brexit discussions between European authorities and the UK have moved forward and the alarmist communication of the European Commission on December 1, 2017, which was countersigned by the European Union Intellectual Property Office, has to be reconsidered in light of the agreement proposed by the Commission and published on February 28, 2018 (European Commission Draft Withdrawal Agreement TF50  Commission to EU 27, 28 February 2018).
This agreement dedicates articles 50 to 57 of title IV to IP rights, and some of these articles have already been accepted by the UK.
It emerges that the UK will remain subject to European rules and the Court of Justice of the European Union during a transition period from March 30, 2019 to December 31, 2020 (article 121).
"The UK undertakes to acknowledge without new examination EU trademarks (EUTMs) and designs registered before the end of the transition period."
The UK undertakes to acknowledge without new examination EU trademarks (EUTMs) and designs registered before the end of the transition period. The identity of the trademark and the goods and/or services designated will be required, as well as identity of the registered design (or published after adjournment) for the continuity of the same rights in the UK (article 50.1).
All decisions under administrative or judicial action in progress on December 31, 2020 ruling on invalidity, cancellation or removal of the register of a European IP right will have effect in the UK, even if the decision is dated after December 31, 2020—as long as the action was introduced before this date.
This decision will take effect in the UK and each European territory. Nonetheless, the UK retains the right not to give effect to the decision if the grounds of the motivation are not applicable under British law (article 50.3).
The renewal date in the UK will be the due date under European law (article 50.4). EUTM owners are assured of the maintenance of the filing and priority dates, as well as of claimed seniority within the UK territory (article 50.5a).
Cancellation of a trademark on the ground of non-use will not be able to be requested in the UK against a former EUTM not used in the UK before December 31, 2020 (article 50.5b). The rights of a well-known trademark will be maintained, to be appreciated under British law once the transition period has ended (article 50.5c).
Design owners will benefit from the filing or priority date which would have been claimed, and from a protection period equivalent to the one provided by European law.
The continuity of protection for trademarks and designs obtained through international conventions is ensured.
The owner of a non-registered design disclosed before the end of the transition period will benefit from a protection equivalent to the one provided by the European text for the remaining time to run.
Trademarks and designs will benefit from an increased priority period of nine months from the filing date, if before December 31, 2020 (article 55).
It is understood that these provisions will have a transitional nature in the sense that from January 1, 2021 IP rights will no longer be governed by European law, but by the applicable UK law.
Finally, IP rights which have been exhausted before the end of the transitional period will remain so, according to European regulations.
Questions about the implementation by the UK’s competent authorities of this continuity and its eventual cost remain.
The Commission has proposed that no specific filing procedure be provided and that this continuity does not lead to payment of fees, without prejudice to the renewal fees or the applicant’s renunciation.
Copyright, including related rights, is subject to a separate note published on March 28, 2018 by the European Commission, which provides for no transition period. Copyright will be ensured by international conventions to which the UK is a party to or member of after March 30, 2019, notably the TRIPS Agreement.
The territories in which the agreement will apply are the following:
- The UK;
- The Channel Islands, the Isle of Man, Gibraltar and the sovereign areas of Akrotiri and Dhekelia in Cyprus; and
- The following states and overseas territories: Anguilla, Cayman Islands, Falkland Islands, South Georgia and Sandwich Islands, Montserrat, Pitcairn, St. Helena and Dependencies, British Antarctic Territories, British Indian Ocean Territory, Turks and Caicos Islands, British Virgin Islands, and Bermuda.
Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at: firstname.lastname@example.org
Aurélia Marie, Cabinet Beau de Loménie, European Commission Draft Withdrawal Agreement, Brexit IP, European IP, European trademark, EUTM