Date: 21 May 2018
On 19 March 2018, the European Commission published the “Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community” which showed where there is full agreement between the EU and the UK, where there is agreement in principle and where there is no agreement. Provisions relating to intellectual property can primarily be found within Articles 50 to 57.
Article 121 of the proposed withdrawal agreement provides details of a transition period, starting from the UK’s exit from the Union (occurring on 29 March 2019 at 11.00 pm, according to the latest European Union (Withdrawal) Bill) and ending on 31 December 2020. EU law will still continue to apply to the UK during this transition period. The transitional arrangements should lessen disruption and legal uncertainty caused by Brexit. However, we can’t be certain that the stated transition period will apply in practice because some issues remain to be agreed (such as the border between Northern Ireland and the Republic of Ireland) and the agreement has yet to be ratified. The EU and the UK will not ratify the agreement until around the end of 2018 (possibly early 2019), and it would then have to be approved via primary legislation passed into law by the UK Parliament.
IS THERE ANY CERTAINTY AROUND HOW THE EUIPO WILL DEAL WITH IP RIGHTS POST BREXIT?
The Draft Agreement is helpfully colour-coded, with text in green highlighting that the following provisions have been agreed in principle:
Text in white in the document corresponds to proposals by the EU on which discussion between the UK and the EU are ongoing; in relation to IP, the text indicates that agreement has yet to be reached with regard to the precise mechanics for the registration procedure in the UK (for EUTMs) (Article 51).
Although the draft Agreement does not specify whether the process will be administered by the UKIPO, Article 51(1) does state that the relevant UK bodies will register the transfer of rights free of charge. Articles 51(2) and (3) provide that the rights holder will not have to submit an application and a number of EU bodies will provide all of the information needed for registration to the UK authorities. Article 50(4) provides that the first renewal date of any trade mark which was transferred to the UK in accordance with Article 50(1) will be the next renewal date of the corresponding IP right registered in accordance with EU law.
IS THIS AS MUCH PROGRESS AS WAS HOPED FOR?
Insofar as EUTMs and registered/unregistered Community designs are concerned, the Draft Agreement echoes the proposals of the UK Trade Mark profession’s representative body, CITMA, namely that these rights should be protected post-Brexit just as they were pre-Brexit. The Draft Agreement goes a step further by essentially extending that approach to all unitary IPRs (including other protected terms in relation to agricultural products) and proposes that holders of unitary IPRs should not have to foot the bill, but it seems likely that the transition, however smooth, will come at a cost.
That said, the Draft Agreement does not reflect as much progress as CITMA hoped for: in its position paper, “Post-Brexit registered trade mark and design rights, and rights of representation”, CITMA recommended that current and future UK Chartered Trade Mark Attorneys be granted continuation of rights of representation before the EUIPO and an extension of existing rights of representation so that they might represent their clients before the EU General Court and the CJEU. The consequences of UK-based Chartered Trade Mark Attorneys no longer being qualified to act before the EUIPO would, as CITMA said, have “far-reaching repercussions” since nearly one in every four EUTM applications are currently represented by a UK representative.
REPRESENTATION AT THE EUIPO
At present, the UK is a member of the European Economic Area (EEA), due to its membership of the EU. If the UK does, therefore, leave the EU, then it will also leave the EEA. Under the current rules of the EUIPO, professionals who are qualified in member states of the EEA are entitled to represent others before the EUIPO. If, therefore, the UK leaves the EU and does not rejoin the EEA, then those UK professionals who are only qualified in the UK, will not be able to act for others before the EUIPO. As our readers will be aware, the question of whether the UK should join the EEA (with all the requirements and commitments that this would entail), is currently the subject of much debate within the UK.
Maucher Jenkins would, however, like to reassure all of its clients that our activities will not be changed. Maucher Jenkins, unlike a number of other firms within the UK, has had a longstanding presence in Germany, with our Munich Office operating for over fifteen years. Further, and far before the UK’s referendum on whether to leave the EU took place in June 2016, RGC Jenkins & Co commenced merger negotiations with the well-established firm of Maucher Borjes & Kollegen in Freiburg, with the merger being completed in August 2015. With Germany remaining resolutely in the EU, we will be able to continue to act before the EUIPO for all of our clients as Maucher Jenkins.
Additionally, we have a number of individuals outside of our German offices who are qualified to act not only in the UK, but also in various other countries of the EU, and also a number of other individuals in our UK Offices who are nationals of other member states of the EU. All of these will be able to continue to act before the EUIPO, even if not based within our German Offices. Maucher Jenkins is therefore highly confident that we will be able to continue to act for all of our clients, from all of our offices even after the exit of the UK from the EU.
Both the German and UK Offices of Maucher Jenkins have been increasing their litigation practices over the last few years. There will be no effect of Brexit on our litigation teams, and we will continue to handle disputes in all areas of IPO in the English and German Courts, as well as continuing to manage multi-jurisdictional cases in Europe and beyond.
A WORD ABOUT DOMAIN NAMES
Owners of “.eu” domain names who are based in the UK should take note of a subsequent document published by the European Commission on March 27 2018, entitled “Notice to stakeholders: withdrawal of the United Kingdom and EU rules on ‘.eu’ domain dnames”. This notice states that (subject to any transitional arrangements) all EU regulatory frameworks for the “.eu” top-level domain will no longer apply to the UK as of 31 March 3019. The likely practical consequences for UK-based proprietors of “.eu” domain names are as follows:
Clients who are proprietors of .eu domain names should review their domain name strategy and consider assigning ownership of any .eu domain names registered in the name of a UK-based individual or entity to an EU-based individual or entity.
Provided that the ratified withdrawal agreement establishes the transition period as ending on 31 December 2020, then any EUTM applications granted after that date will not cover the UK. Clients should therefore consider filing an UK application as well as a EUTM application. As regards EUTM registrations granted before the end of the transition period, even if all of those EUTM registrations automatically have effect in the UK, there is likely to be some period of uncertainty before this takes effect. We would therefore recommend that clients consider re-filling their EUTMs in the UK, especially where the mark is a house mark or house logo.