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Intellectual Property Rights post-Brexit

State of affairs in latest draft agreement on the withdrawal

14 December 2018

On 19 March 2018, the UK government and the European Commission (EC) published a revised version of the draft agreement on the withdrawal of the UK from the EU (the draft agreement). Title IV of the draft agreement is devoted to Intellectual Property Rights (IPRs).

Parts of the draft agreement are still in the process of being negotiated. Nevertheless, there seems to be consensus on the majority of the text on IPRs as originally draft by the EC. The latest draft withdrawal agreement is colour coded to show the extent to which points have been "agreed at negotiators' level": green highlighting indicates agreement; yellow indicates agreement at a political level, but further clarification is needed; and no highlighting shows areas where negotiations are still ongoing.

The draft agreement includes a "transitional period" during which EU laws would continue to apply in the UK. This transitional period would start on the date of entry into force of the agreed withdrawal agreement until 31 December 2020.

As it currently stands, the draft agreement intends to provide continued protection in the UK for registered or granted IP rights following Brexit.  The following provisions of the draft agreement have been agreed (highlighted in green in the withdrawal agreement): 

  • Holders of EU trade marks (EUTMs), Community designs and Community plant variety rights registered or granted before the end of a defined transition period will become holders of comparable IP rights in the UK.
  • Filing and priority dates and seniority for converted trade marks will be preserved. Trade marks in the UK will not be liable to revocation on the ground that the corresponding EUTM was not genuinely used in the UK before the end of the transition period, while converted trade marks will continue to benefit in the UK from reputation acquired in the EU.
  • With respect to registered design rights and plant variety rights, the term of protection under the law of the UK shall be at least equal to the remaining period of protection under EU law.
  • Owners of international trade mark or design registrations under the Madrid or Hague systems respectively, who have designated the EU before the end of the transition period, shall enjoy protection in the UK for their trade marks or designs in respect of those international registrations. There will be similar continued protection in the UK for unregistered Community designs and databases.
  • Where an EUTM application was accorded a date of filing, the applicant shall have (for the purpose of filing a trade mark application in the UK for the same trade mark in respect of goods or services that are identical with or contained within those for which the application has been filed in the EU) an ad hoc right of priority in the UK during a period of nine months from the end of the transition period.
  • Applications for supplementary protection certificates in the UK pending at the end of the transition period will still be processed under EU Regulation No 1610/96 and EU Regulation No 469/2009.
  • IP rights exhausted both in the EU and the UK before the end of the transition period will remain exhausted in both territories. 

There are three provisions included in the withdrawal agreement that are still being negotiated (not highlighted): 

  • Whether there will be continued protection of geographical indications and similar right in the UK after the transitional period;
  • How registered unitary rights will continue to be protected in the UK following Brexit and how the registration procedure, including fees, will work in practice; and
  • Whether applications for supplementary protection certificates in the UK pending at the end of the transition period will still fall under Regulation No 1610/96 and Regulation No 469/2009.

Patents are not mentioned in the draft agreement because the system of European Patents is based on the European Patent Convention, which is not linked to EU Member State status. The European Patent, which is a bundle of national patents accessed through a central application process, will still be available through the European Patent Office.

On 23 March 2018, the European Council approved guidelines for the negotiation of future relations with the UK after Brexit.  Negotiations are still ongoing but the aim is to have a final version of the withdrawal agreement agreed by October 2018 in order to allow enough time for ratification by the European Parliament, the Council and the UK. The extent to which the terms of the draft agreement will eventually be adopted in a final agreement remains to be seen. 

This article was written by Axelle D'Heygere, TMT, London