The Brexit means that as from March 30, 2019, the United Kingdom will no longer be part of the European Union. What are the consequences for your IP rights in the European Union, such as EU trademarks and registered Community designs, after the Brexit? What can you do to ensure that your EU trademarks and registered Community designs are still valid in the UK after the Brexit?
The Brexit has consequences for your IP rights in the European Union. These IP rights include EU trademarks and registered Community designs, but also plant variety rights, geographical indications and designations of origin. European patents are covered by the European Patent Convention, which includes member states from within and outisde of the European Union. Therefore, the Brexit will not have any consequences for European patents that are specifically validated in United Kingdom under the European Patent Convention. The Brexit may have consequences for the Unitary patent agreement, which however has not entered into force yet. See also our dossier on the Unitary patent.
This article will only discuss the consequences of the Brexit for EU trademarks and registered Community designs.
Draft withdrawal agreement
On 28 February 2018 the European Commission published its first draft of the withdrawal agreement.
It should be noted that there is no definitive agreement yet, but the draft contains important information for the world of Intellectual Property, as it explains the wishes of the European Commission regarding the treatment of European IP rights post Brexit and in particular in respect of EU trademarks and registered Community designs.
The draft agreement presupposes that there will be a transitional period that will last until 31 December 2020.
During the transition period, the default position is that European law will continue to apply in the United Kingdom. This means that European IP rights, including EU brands and community designs, will also continue to apply in the United Kingdom. The same applies to other European IP rights, such plant variety rights, geographical indications and designations of origin.
After the end of the transitional period, European IP rights will no longer extend to the United Kingdom. However, the European Union takes the position that there will be no loss of protection for holders of European IP rights. The draft agreement states that the holders of European IP rights will automatically and without charge be granted a similar IP right for the United Kingdom, thus without requirement to file an application or to undertake any particular administrative procedure. The UK trademark shall have the same date of filing or date of priority and, where applicable, the seniority. The first renewal date of the new UK IP right will be the same as that of the corresponding European IP right. For IP rights that are limited in terms of duration (e.g. design right or plant variety right), the term of protection of the new UK IP right shall, at least, be equal to that of the European IP right on which it is based. The same applies in respect of a right in relation to an unregistered Community design, which arose before the end of the transitional period.
It is not yet known what the British government thinks of the proposed provisions. It seems logical, however, that the United Kingdom will accept the general principle that no IP rights may be lost, but there may be other ways to achieve this outcome. It is conceivable that the United Kingdom will continue to recognize the European IP rights also after the transitional period and until the renewal date of the IP right, but then requires that a kind of maintenance application must be filed in order to preserve the IP rights in the United Kingdom.
It should be borne in mind that none of the above provisions will apply, if the European Union and the United Kingdom are unable to conclude a withdrawal agreement. It still may take some time until it is clear what the consequences of the Brexit are for European IP rights. We will keep you informed.
If you have any questions regarding your IP rights in the European Union, please do not hesitate to contact us.