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Own an EU trade mark or design right and wondering what will happen to it post Brexit? I have some good news…

Since the referendum on Brexit uncertainty has reigned over those UK businesses holding EU registered and unregistered intellectual property rights in respect of the status of those rights post March 2019. Some much needed clarity has finally been forthcoming from Brussels in the form of the updated “Draft Agreement on the withdrawal of the United Kingdom from the European Union” which was published on 19 March 2018. 

Negotiators have agreed certain terms of the withdrawal agreement, subject to technical legal revisions, relating to EU intellectual property rights including EU trade marks and EU Design Rights, both registered and unregistered.  It is agreed that a transitional period, during which EU IP rights will still give protection in the UK,  will take place after March 2019 until at least the end of 2020, although the exact length of this period is not known at this stage. The end of this period, although not yet specified, will be classed as the “relevant date” in respect of the implications of the withdrawal on the IP rights. 

The good news for UK holding EU registered trade marks and registered design rights is that the negotiators seem to have finally agreed that these rights will become “comparable registered and enforceable intellectual property rights in the UK” with automatic effect from the relevant date. This will happen without the need for re-examination by the Intellectual Property Office. These comparable rights will also be given the same filing and priority dates as their EU predecessors, meaning the period of protection afforded will remain unchanged. For those businesses holding unregistered community design rights, an equivalent UK right will come into effect for the remainder of the protection period given by their EU unregistered design right. Whilst the agreement is still a draft, the fact that these provisions are largely agreed should afford businesses a level of certainty previously lacking since 23 June 2016.

UK Businesses with EU registered trade mark can be doubly happy as the negotiators also seem to agree that reputation generated in EU registered trade marks will be taken into account in relation to the new UK trade marks up to the relevant date. This may prove to be crucial if businesses need to take trade mark infringement action in respect of a new UK trade mark which converted from an EU mark. It should be noted, however, that after the relevant date only reputation in the UK will be taken into account for any UK based infringement action. 

In addition to the above, EU registered trade marks which convert to new UK registered trade marks cannot be revoked on non-use grounds simply due to a lack of use in the UK. Non-use is one of the grounds for revocation of a UK registered trade mark, however in relation to any registered trade marks which convert, use elsewhere in the EU will be sufficient provided that such use would have allowed the registered trade mark to be maintained as an EU right. This will be a relief for those business who operated solely in the EU but want to maintain trade mark protection in the UK after Brexit for whatever reason, although it is likely that use will need to commence in the UK after the relevant date to maintain the new UK trade marks in the future. 

Clearly there is good news all round for holders of existing EU IP rights but what about those with pending applications for an EU trade mark or registered design. Such applicants will have 9 months from the relevant date to make a UK application in respect of the relevant IP right, which will be granted the same priority date of its EU precursor. This means that any business seeking to apply for such a right does not lose the protection given by the priority date against a later application for a similar trade mark or design.  

A  note of caution should still remain in respect of the above given that the agreement is indeed a draft. Theresa May and Co. still have numerous legal and practical  issues to iron out in relation to EU IP rights and nothing will be definite until the final withdrawal agreement is signed  by all 28 member states.  All in all, however, the latest draft of the withdrawal agreement gives a measure of clarity and certainty as to what will happen and means that owners of EU based IP rights can breath a sigh of relief, at least for now. 

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