On 14.11.2018, the EU parties apparently achieved a breakthrough in the negotiations on a withdrawal agreement. However, the draft, which has now become public, still has to be approved by the British Parliament, the 27 EU heads of government and the EU Parliament. Art. 54 et seq. of the draft regulates the fate of EU-wide intellectual property rights, including the following:
Owners of registered European Union trademarks or internationally registered trademarks designating the EU will automatically become owners of corresponding national trademarks in Great Britain at the end of a transitional period until 31.12.2020, without the need for a separate registration process. The conversion takes place without separate application, is free of charge and enjoys the same filing or priority date as the corresponding Union trade mark or the seniority of an earlier British trade mark which may have been claimed. Renewal data will also be taken from the European Union trade mark.
Within that transitional period, official or judicial decisions to cancel the Union trade mark on grounds of revocation, invalidity or infringement of earlier rights will also automatically take effect on the converted United Kingdom trade mark, unless the ground for cancellation is not present for the United Kingdom. Until the end of the transitional period an application for cancellation for non-use filed against a Union trademark cannot, however, be based on the fact that the Union trademark has not been genuinely used in the United Kingdom.
If a trademark has acquired reputation within the European Union, the reputation will also deem to apply to the converted trademark in Great Britain until the end of the transitional period; from 01.01.2021, however, the prerequisites for reputation must also be proven there if necessary.
The draft also provides for corresponding transitional provisions for Community designs, internationally registered designs designating the EU, Community plant variety rights as well as geographical indications, designations of origin and traditional terms for wine registered under EU Regulation 1308/2013. The unregistered Community design is also to be automatically converted into a corresponding additional national right whose duration under national law is at least as long as provided for in Art. 11 (1) of the Community Design Regulation.
Applications for European Union trademarks or Community designs filed within the transitional period but not registered or granted protection, which are therefore not automatically converted, may be reapplied for in Great Britain until 30.092021 while retaining the original filing date, priority date or seniority.
Finally, the draft stipulates that intellectual property rights which were exhausted in both the European Union and the United Kingdom before the end of the transitional period of 30.12.2020 under the requirements of EU law remain so in both territories. If a product bearing the trademark is placed on the market within the EU 27 territory with the consent of the owner by the end of the transitional period, the trademark rights will also be exhausted with effect for Great Britain.
It remains to be seen whether the draft agreement will clear the final hurdles and may have rights holders take a further – albeit brief – deep breath in view of their IP rights management.