Under a recently published Draft Agreement, the European Union (EU) and the United Kingdom (UK) have agreed at a negotiator’s level that any person holding a registered or granted European trade mark, design or plant variety right before the end of the ‘transition period’ will automatically become the holder of an equivalent IP right under UK law. (The position in relation to Geographical Indications is still under discussion between the parties.)

The ‘transition period’ starts on the date that the Agreement is finalised and ends on 31 December 2020.

The Draft Agreement also provides that a UK trade mark granted in accordance with these provisions will not become vulnerable to revocation for non-use on the basis that the EU mark had not been used in the UK before the end of the transition period. Trade mark owners will also be able to rely upon reputation in the Union up to the end of the transition period to enforce rights in the UK arising from that reputation.

If an EU IP right is declared invalid or revoked as the result of an administrative or judicial procedure that was pending on the last day of the transition period, the corresponding UK right will also be declared invalid or revoked, unless the grounds for invalidity or revocation do not apply in the UK.

With regard to pending applications for EU trade marks or designs, a person who has a pending EU application may apply for protection in the UK within nine months of the end of the transition period. An application filed in the UK under this provision will have the same filing date and priority date as the corresponding EU application. With regard to pending plant variety rights, an applicant for an EU plant variety right may claim priority from the EU application for a UK application filed with six months of the end of the transition period.

The Agreement is still only a draft and whilst the negotiators have agreed to the above proposals, these may still be subject to changes as a result of discussions and compromises on other issues. However, in light of the Draft, owners of EU IP rights may take some degree of comfort that their rights will be maintained in the UK after the split from the EU. It is also likely that most currently pending applications will have been finalised before 31 December 2020, making it less important to consider filing in both the EU and the UK to ensure maintenance of rights. However, as the Agreement is still not final, trade mark owners may still wish to consider filing any marks that are essential to their business in both jurisdictions. Even though this will currently result in doubling up of protection after the end of the transition period, it will also ensure that protection is not jeopardized by possible changes to the Draft Agreement before it is finalised.