The New Withdrawal Agreement negotiated between the EU and the UK (by Boris Johnson's government) provides continuity for holders of registered EU trade mark rights, Community design rights and Community plant variety rights.

 

Transition period

 

Article 126 of the New Withdrawal Agreement provides for a transition period starting from when the UK exits EU, ending on 31 December 2020.

 

Registered EUTMs and RCDs

 

Following the transition period, owners of EU trade marks (EUTMs), Community designs and Community plant variety rights that have been granted before the end of the transition period will "without any re-examination, become the holder of a comparable registered and enforceable right in the UK" (art.54 of the New Withdrawal Agreement).

 

Pending applications

 

Applicants can (and should) continue to file EUTM and international (EU) applications as usual until at least June or July 2020. Based on the EUIPO’s speed of registration, the majority of routine EUTM and international (EU) applications filed by that date should have been granted before the transition period expires on 31 December 2020. These applications will automatically convert into equivalent national UK registrations, so there will be no need to file a separate UK application (see Fig.1).

 

 

Fig. 1: Applications during the transition period.

 

The owner of a pending EUTM or RCD at the end of the transition period (December 2020) will be entitled to file a corresponding UK application within nine months from the end of the transition period—i.e. to September 2021 (Withdrawal Agreement art. 59 (1)). This new UK application will retain the filing date of the EUTM (and priority date if applicable). However, it is not a free option (see Fig.2).

 

 

Fig. 2 Applications pending at the end of the transition period.

 

 

International registrations

 

The UK Government will arrange a system with WIPO to allow EU designations of international registrations to be converted into, or re-registered as, national UK trade mark registrations, retaining their original filing or priority date.

 

Trade marks and registered designs can be obtained through the international Madrid and Hague systems—international registrations specifically designating the UK will be unaffected by the UK leaving the EU.

 

Those who have obtained protection for international registrations of trade marks or designs designating the EU before the end of the transition period will continue to enjoy protection for those international trade marks and designs after the transition period (art.56 of the Withdrawal Agreement).

 

Unregistered design rights

 

Holders of unregistered Community design (UCD) rights that arose before the end of the transition period will become owners of corresponding rights in the UK (with the "same level of protection" as the corresponding UCD) after the transition period (art.57 of the Withdrawal Agreement).

 

 

For further information about intellectual property and Brexit, visit our Brexit Resources page or get in touch with a member of our team