After facing considerable uncertainty over the management of IP rights between the U.K. and EU post Brexit, brand owners can breathe a sigh of relief after the U.K.’s announcement last week reassuring businesses that it seeks to minimize disruption to the treatment of trademarks once Brexit is complete. To avoid the loss of any existing rights, the U.K. has confirmed its plans to automatically convert all existing EU trademarks and Community designs to comparable U.K. national rights once the U.K. leaves the EU – at no cost to trademark owners.
Last week’s announcement was released by the U.K. government alone, and not as part of a joint statement with the EU Commission. However, the latest draft withdrawal agreement released by the EU Commission on March 19, 2018, indicates the EU’s agreement with implementing a trademark conversion plan, and sheds light on the process by which trademark rights will be maintained in the U.K. While the withdrawal agreement is still being negotiated between the two parties, the March draft indicates that many terms have already been agreed upon at the negotiators’ level, including a number of terms related to the treatment of intellectual property rights.
Specifically, the parties have agreed that at the end of a transition period lasting until 2020, owners of registered EU trademarks or registered Community designs will automatically be granted comparable registered and enforceable intellectual property rights in the U.K., without re-examination. Further, owners of rights in unregistered Community designs that arose before the end of the transition period shall enjoy continued protection in the U.K. at the same level of protection as provided under EU law.
However, if an EU trademark application is still pending at the end of the transition period, then the resulting registration would exclude the U.K. To avoid any loss of rights in such situations, owners of pending EU applications will have a six-month window after the end of the transition period to file a new U.K. national application, with the ability to claim “priority” so that the new UK application would share the same filing date of the pending EU application.
Since Brexit was first announced, and after the European Commission’s December 1, 2017 Notice encouraging businesses to prepare for implications of the withdrawal, many brand owners have taken steps to secure additional filings in the UK and/or EU to ensure thorough protection of IP rights. However, in light of the U.K.’s announcement last week, it may no longer be prudent to secure new filings in the U.K. in order to maintain consistent protection of existing EU registrations in a post-Brexit world. Nevertheless, as the end of the transition period draws near, brand owners may still need to consider additional priority filings in the U.K. if any pending EU applications have not yet been granted registration.