Summary: The latest draft agreement on the withdrawal of the UK from the EU has been released and we are now able to examine what might bring more clarity to the treatment of IP rights following Brexit. The draft withdrawal agreement, of course, still remains subject to approval by the European Parliament and the UK Parliament.
For the most part, in respect of registered rights, the draft remains much the same as the provisions of the previous agreement. However, the new draft agreement now also deals with the mutual treatment of geographical indications, unregistered design rights and the continued application of the sui generis database right.
Advocates from the UK representing clients at the EU IPO can rest easy, momentarily, as they will be allowed to continue their representation in any on-going proceedings.
Here are the positions on the key aspects of the IP provisions.
All current holders of: (a) an EU trade mark; (b) a registered Community design; or (c) a granted Community plant variety right, each of which is registered or granted before the end of the transition period shall automatically become the holder of the comparable registered right in the UK (Art 54(1)), free of charge (Art 55). If at any time after the transition period, the originating EU right is declared invalid, revoked, declared null and void or cancelled in the EU, the same will applied to the corresponding right in the UK (Art 54(3) and 54(4)).
Any applications for any of the above mentioned registered rights that are pending at the end of the transition period may be applied for in the UK within 9 months of the end of the transition period, and will be given the same filing and priority dates as the corresponding EU application (Art 59).
Internationally registered trade marks or designs, under the Madrid system and the Hague system, which designate the EU shall also be granted protection in the UK (Art 56).
Unregistered Community designs
All holders of rights in unregistered Community designs which were established prior to the end of the transition period shall automatically be recognised as holding the same enforceable rights in the UK, for at least as long as those rights exist in the EU (Art 57).
Where geographical indications, designations of origin, traditional specialty guaranteed or traditional terms for wine are recognised under EU regulations at the end of the transition period, the same shall be granted at least the same level of protection in the UK, unless and until any such right ceases to be protected in the EU after the end of the transition period (Art 54.2). Such rights shall be recognised without charge to the rights holder (Art 55).
The EU sui generis database right shall be recognised in the UK in relation to rights in databases that arose prior to the end of the transition period. Conversely, UK nationals and residents, and companies registered in the UK (and legitimately doing business in the UK or in an EU Member State) shall be recognised under the EU database directive (Art 58).
Exhaustion of Rights
IP rights that were exhausted in the EU and in the UK prior to the end of the transition period shall remain exhausted in both the EU and the UK after the transition period (Art 61).
Representation at the EU IPO
Where, prior to the end of the transition period, a person is authorised as a representative to a party in proceedings before the EU Intellectual Property Office, that person may continue to represent that party for all stages of the proceedings following the transition period (Art 97).
So, for now it seems that they’ve added a few verses to the same old song. But we must await the conductor(s) before the music can begin, as the new draft agreement remains subject to parliamentary approval in both the EU and the UK.