Draft Agreement between UK and EU reached on 19 March 2018

Following months of negotiations the UK and European Union have finally published their draft agreement on UK’s withdrawal from the EU which is scheduled to take effect on 29 March 2019. Importantly, the EU and the UK have agreed that EU trade marks and designs which have been registered will continue to be protected beyond the end of a post-Brexit transition period which will expire on 31 December 2020.

We have previously surmised the effects of Brexit on IP rights holders (as well as public sentiment) in the weeks immediately after the historic referendum on June 23rd 2016, as well as following the UK’s formal notification of intention to exit the EU last year. However, the announcement by the UK government this week provides some much needed reassurance to IP rights holders.

The negotiators have already come to an agreement on various aspects of the agreement, and a quick scan reveals that negotiations regarding most IP rights have already been largely agreed to and are only subject to technical legal revisions.

Effect on EU trade marks and designs

In particular, holders of an EU trade mark will automatically become the holder of a trade mark in the United Kingdom consisting of the same sign, for the same goods or services, or in the case of existing EU design registrations, the holder of a registered design for the same design. Owners of EU trade mark applications pending at the end of the transition period on 31 December 2020 will have 9 months in which to file a UK trade mark application for the same trade mark for the same goods and services to retain the benefit of the same filing date and priority date as the EU trade mark application.

  1. EU trademarks or registered design rights transferred to the UK will retain their EU renewal dates, filing and priority dates, and remaining term of protection;
  2. EU trademarks:
  • Cannot be revoked on the grounds of it not being used in the UK before the end of the transition period;
  • Protection relating to third party use taking unfair advantage of, or detrimental to the registered trade mark within the EU region will now be limited to the UK.

3. Businesses that wish to obtain protection for their trade marks and designs in the UK and Europe do not need to file separate applications with the UKIPO and EUIPO until the end of the transitional period on 31 December 2019.

Holders of EU trade marks and designs should keep these in mind and plan well in advance of the end of the transition period on December 31st 2020.

On the other hand, businesses in several countries wishing to obtain design protection covering the UK post Brexit able to obtain an International Design Registration following ratification of the ‘Hague Agreement’ by the UK in the last week. Australia is not currently a member of the Hague Agreement, and so Australian designers at this stage cannot apply for International Design Registrations, though it is possible that Australia may join the Hague Agreement by the time the post-Brexit transitional period expires at the end of 2020.

Effect on patents

As we have discussed before, European patents will not be affected as the European Patent Convention (EPC) agreement is not tied to the European Community agreement, and it will still be possible to apply for a European patent designating the UK after Brexit.

We still await the necessary ratification of UK laws to the Unified Patent Court (UPC) agreement for the Unitary Patent System to commence. Expect to hear back shortly given that the Unified Patents Court (Immunities and Privileges Order) 2017 was approved by the House of Lords in December 2017. Ratification of the UPC agreement by Germany is also required before the Unitary Patent System can start. There is a constitutional challenge pending in Germany to ratification of the UPC agreement which is expected to be resolved by the end of this year. However, even if the UK and Germany ratify the UPC agreement to enable the Unitary Patent System to commence before Brexit happens, there still remains uncertainty about the continued participation in the new system after the end of the transitional period on 31 December 2020.

Conclusion

While this is mostly good news for owners of trade marks and designs in the EU, negotiators have yet to agree on whether fees relating to the registration or grant of the trade mark and design rights in the UK post Brexit will be passed on to the owners or covered by the UKIPO entities. We will be keeping a close eye on this, and on further developments in connection with the Unitary Patent System, and so watch this space.