Brexit

What Brexit may mean for your intellectual property rights in Europe

On 28 February 2018, the European Commission published its Draft Withdrawal Agreement relating to Brexit. The agreement sets out at Articles 50 et seq. how intellectual property is proposed to be dealt with upon Brexit coming into effect.

The main take home points are:

  1. Registered intellectual property rights
    There will be continued protection in the United Kingdom of registered or granted rights relating to trade marks, designs and plant variety rights, without the payment of any additional fees.

    • Registered trade marks
      The holder of a European Union registered trade mark shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services.
    • Registered designs
      The holder of a registered Community design shall become the holder of a registered design right in the United Kingdom for the same design.
    • Granted plant variety rights
      The holder of a granted Community plant variety right shall become the holder of a plant variety right in the United Kingdom for the same plant variety.

This indicates you will not have to file a new application into the UK nor pay any fees to ensure your intellectual property rights remain in force in the UK.

  1. Unregistered trade marks
    Where a trade mark application has been filed in the European Union (directly or as a designation under the Madrid Protocol) and registration (or extension of protection) has not yet been attained, no equivalent right will be created in the United Kingdom.  Instead, the holder will be given six months from the last day of transition (which at this stage is set for 29 March 2019) (Brexit Date), to file a new trade mark application in the United Kingdom and be able to claim the priority date of the European Union trade mark application.

Most trade mark applications take at least seven months to attain registration in the European Union. Accordingly, if a trade mark application is filed in the European Union after August 2018, it is unlikely it will proceed to registration prior to the Brexit Date. This will result in you needing to file a new trade mark application in the United Kingdom (at additional cost) to obtain protection there.

  1. Unregistered designs
    The holder of an unregistered Community design filed prior to the Brexit Date, shall receive at least equivalent rights (and for at least the same amount of time) in the United Kingdom.
  1. Plant variety rights
    Where an application has been filed in the European Union for a Community plant variety right and it hasn’t yet been granted, no equivalent right will be created in the United Kingdom. Instead, the holder will be given six months from the Brexit Date to file a new application for a plant variety right in the United Kingdom and be able to claim the priority date of the Community plant variety right application.
  1. Geographical indication, etc.
    Where a geographical indication, designation of origin, traditional speciality guaranteed, or traditional term, e.g. champagne, Parma (prosciutto di Parma), etc. is protected in the European Union, the holder will be provided with at least the same level of protection under United Kingdom law, with respect to the geographical indication, the designation of origin, the traditional speciality guaranteed or the traditional term concerned.
  1. Ongoing disputes
    If a European Union right is in dispute as at the Brexit Date, and is subsequently declared null and void or cancelled, then the corresponding United Kingdom right will also be declared null and void.

Accordingly, if protection of your brand, design or plant variety in the United Kingdom is important and there are pending removal or cancellation proceedings in the European Union as at the Brexit Date, it would be advisable to file a new application into the United Kingdom to ensure your rights are not adversely affected. 

If you are considering securing protection of your intellectual property rights in the European Union (and United Kingdom) in the near future, please contact Mark Metzeling, Belinda Sigismundi or Tony Clarke to discuss your protection strategy as considerable costs may be saved by the early filing of applications.

This article was written by Mark Metzeling, Special Counsel – Commercial.