20 March 2018Copyright

UK agrees protection of IP rights post-Brexit transition

The UK and European Union have agreed that owners of EU trademarks and Community designs will have their rights protected in the UK after the transition period which is due to end on December 31, 2020.

The announcement comes as part of the release of the EU and UK government’s draft agreement on the latter’s withdrawal from the EU, published yesterday, March 19. It was agreed that there will be a transitional period from March 29, 2019, to December 31, 2020, during which time the UK will remain part of the EU.

The draft agreement includes provisions on protection and enforcement of IP after the end of the transitional period.

EU trademark registrations, Community designs, plant variety rights and database rights will all be protected and, because they are highlighted in green on the paper (which means the provisions have been agreed at negotiators’ level), the provisions “will only be subject to technical legal revisions in the coming weeks”.

According to the draft agreement, the owners of the above marks shall, “without any re-examination, become the holder of a comparable registered and enforceable in IP right in the UK”.

Negotiations continue for the protection of geographical indications and pending applications for supplementary protection certificates post-Brexit.

Article 57 of the draft agreement (which has been agreed) provides that if IP rights have been exhausted both in the UK and EU before the end of the transition period, then the rights will remain exhausted in both areas after the transition.

In a blog post, Taylor Wessing said that while this development represents a “significant step forward” in understanding how unitary rights will be protected after the transitional period, some details still need to be finalised.

“Perhaps more importantly, there is still considerable uncertainty as to how unitary rights will be dealt with by the European Union Intellectual Property Office  (EUIPO) and EU courts once the transitional period is over.”

The Chartered Institute of Trade Mark Attorneys (CITMA) said that it will continue to lobby and engage with relevant parties on the parts of the agreement that are still being negotiated.

CITMA is meeting with the EUIPO later this week and the UK Minister for Intellectual Property, Sam Gyimah MP to discuss issues around the details of the withdrawal agreement, and rights of representation.

Kate O'Rourke, president of CITMA and senior counsel at Charles Russell Speechlys, welcomed the agreement, noting that the inclusion of the preservation of filing, priority and seniority dates and claims ensures that no business will be prejudiced by the UK's exit from the EU.

"There is however a question mark over whether there will be a cost to business, and the UK government does need to make clear its position on this," according to O'Rourke.

She said that the transition period will allow businesses to feel confident that they do not need to double file their trademarks and designs at the EUIPO and the UK Intellectual Property Office. The proposed nine-month priority period after December 31, 2020 for businesses to refile applications also provides a "safety cushion" for pending trademarks and designs not registered by that date.

“There are other points of detail which need to be ironed out, particularly the ability for UK chartered trademark attorneys to continue to represent clients and businesses before the EUIPO, and ongoing protection for geographical indications," she concluded. "We can expect ongoing lobbying on all of the issues while the negotiations progress.”

Jessica Le Gros, head of trademarks at Baker McKenzie, welcomed the development but added that there were still concerns.

"Of particular concern for large trademark owners is that the specifics of creating equivalent UK rights from existing EU registrations is still up for negotiation," she commented. "In our view, this should be done without charge or administrative burden to rights owners, so we hope to see the negotiating position move towards that outcome."

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