Date: 14 May 2018
By Hugh Dunlop
The EU Commission published its Draft Withdrawal Agreement on 28 February 2018, providing that holders of registered EU trademark rights, Community Design rights or Community plant variety rights shall become holders of corresponding rights in the UK after Brexit.
On 19 March 2018 the negotiating parties exchanged a colour-coded version of the draft text indicating that much of the text has been agreed.
A proprietor of an EU IP right on 31 December 2020 (the end of the Brexit transition period) will be entitled to a new UK IP right on 1 January 2021 that is equivalent in every way to the EU IP right. It seems that the UK government is not holding out for a veto right to refuse to allow a EUTM registration onto the UK register, e.g. for EUIPO marks that have previously been refused by the UKIPO. What is not yet agreed is the extent to which the cost of implementing the new IP right will fall on the UK Government, the rightholder and the EU.
The Commission’s draft proposes that registration of corresponding UK rights will be free of charge and will require no administrative procedure, including no requirement for a UK address-for-service, at least up to first renewal of the right (draft Art 51). This is sometimes referred to as the “Montenegro” model. The UK Government has not yet agreed to make this happen free of charge and may require an opt-in (sometimes referred to as the “Tuvalu” model) or may simply unilaterally deem that the EU rights have effect in the UK (referred to as the “Jersey” model).
Designations of the EU in a Madrid system or Hague system application before the end of the transition period shall enjoy “grandfathered” protection in the UK for their marks or designs (draft Art 52). This too is agreed.
Unregistered Community design rights will become enforceable UK rights (agreed draft Art 53). Database rights will likewise become enforceable UK rights (agreed draft Art 54).
It is also agreed (draft Art 55) that pending applications for EU trade mark rights shall be dealt with by giving rise to an ad hoc right of priority in the UK for the same mark in respect of the same or similar goods or services, for a 6-month period from the end of the transition period. Applications for Community plant variety rights are dealt with in a similar way.
Where an application for an SPC is made in the UK before the end of the transition period but the procedure for grant of the certificate is ongoing at the end of that period, the Commission proposes that the applicable EU SPC regulations shall apply, and any subsequent granted certificate shall have the level of protection provided for by those regulations (draft Art 56). This is not yet agreed.
Rights that were exhausted in the EU and the UK before the end of the transition period will remain exhausted (agreed draft Art 57).
An area over which there may remain some negotiating is in geographical indications, designations of origin and designations of traditional specialities. The Commission proposes that these will be grandfathered to become equivalent UK rights (Art 50(2)). The EU currently recognizes non-EU geographical indications and will continue to do so. Accordingly, businesses relying on UK geographical indications (e.g. “Scotch” whisky) should continue to benefit from protection in the EU system, whatever the result of the negotiation.