Following on from our recent alert on the “Draft Withdrawal Agreement”, this note provides an up to date summary of the two most likely outcomes for rights owners: a “no deal” or hard Brexit, or a deal substantially in the form of the Draft Withdrawal Agreement. We also provide practical advice to IP owners as to what to do now to be prepared for most eventualities.
The recent publication of 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” (Draft Withdrawal Agreement) in November 2018 and the publication of various technical notices dealing with a no deal Brexit by the UK Government in the summer, mean that we now have some welcome clarity on the EU and UK positions on IP rights as a consequence of Brexit, although of course the political situation is rapidly changing and uncertain.
Practical Tips for IP owner
Licences / Co-existence agreements
- Existing and future licence and co-existence agreements, brand-sharing agreements, etc. may include a definition of the territory which refers to the EU. Any new agreements that include a definition of the EU (e.g. as the territory) should be clear whether it is the EU as constituted at the date of the agreement or as constituted from time to time. Review significant existing IP agreements that refer to the EU as a territory.
Trade marks and designs
- If there is no deal, there is currently no need to re-file registered European trade marks (EUTMs) as new UK national applications, where the trade marks are currently in use in the UK for the registered goods/services or where the EUTMs will not imminently be vulnerable for non-use revocation at the time of Brexit, namely 29 March 2019.
- From now onwards until such time that we have certainty with regard to the final Brexit deal, dual filings for new trade marks (UK and EU) are recommended in cases where protection in both territories is needed. This addresses the fact that any EUTM application filed from now on is unlikely to mature to registration before 29 March 2019, so applicants would not benefit from the automatic ‘cloning’ the UK IPO intends to perform. (The UK IPO will only afford a UK national trade mark registration to already registered EUTMs in the event of a ‘no deal’ Brexit.)
- For pending EUTMs, we do not recommend re-filing now as new UK applications and instead recommend waiting in order to take advantage of the 9-month period (either from 30 March 2019 in case of a no deal Brexit or 31 December if the Withdrawal Agreement is confirmed) during which applicants can re-file pending EUTMs as UK national marks, while retaining the priority date (including any seniority date for the UK). Note, the same costs would be incurred as if you were filing a national UK application and no automatic notifications will be issued by the Registry, so this will need to be monitored by the relevant EUTM applicants or their representatives.
- As a precautionary measure for core brands, for EUTM designations under the Madrid system for International trade marks, consider filing UK applications now if protection in the UK is required. This is because, in the event of a ‘no deal’ Brexit, the UK government have not guaranteed ongoing protection to brand owners, only that it “is working…to provide continued protection“.
- Consider the impact on your administrative support functions of the ‘cloning’ of new UK trade mark and design registrations. Records will need to be created and updated for any “cloned” trade marks to ensure proper tracking of renewals and other deadlines.
- Consider now (in advance) whether you may want to opt out of ‘cloned’ UK registrations. The UK IPO intends to write to rights owners to provide this option, although it is anticipated that opting out might incur a fee. If a fee is charged, it may be more cost effective to simply allow cloned UK registrations that are not of interest to lapse on renewal.
- Do not allow UK registrations to lapse from which a seniority claim has been made if continuing UK protection is required and do not claim seniority from a UK right.
- Review ongoing EU disputes that have a UK trade mark as their basis, as well as UK disputes that have a EU trade mark as their basis and which may still be pending at the time of Brexit.
- Review defensive filing strategies and ensure your strategy maximises the possible advantages from filing an EUTM, where no bona fide intention to use is required (unlike the UK), particularly as there will likely be a restart of the non-use grace period for any ‘cloned’ UK registrations.
Overview of IP Rights under the Draft Withdrawal Agreement vis-à-vis a no deal Brexit:
|Draft Withdrawal Agreement||No deal Brexit|
|Timeframe||Agreed “transition period” from 30 March 2019 to 31 December 2020||“Brexit “on 29 March 2019, with the post Brexit regime applying as of 30 March 2019|
|Registered Trade Marks
& Community Plant Variety Rights
|UK government will grant owners of registered European Trade Mark (EUTMs), Registered Community Designs (RCDs) and Community Plant Variety Rights (CPVRs) a new UK equivalent right. In effect, a “clone” of the EUTM, or RCD with no action necessary or cost incurred on the part of the holder.
The ‘cloned’ rights will not be re-examined, will enjoy the priority date of EUTM (including any UK seniority claim for trade marks).
|Similar, with small nuances:
Cloning would be “with minimal administrative burden” on the holder but no fee for the rights holder.
Rights holders will be notified of a new UK right and can opt out of this scheme.
|Existing EUTMs/RCDs/CPVRs will continue to be valid in EU27 only.||Same.
|Nine month “priority” period for owners of pending EUTM/RCD applications to apply in the UK for the same protection; for CPVRs, the period is six months. These re-filed applications will retain the priority dates from the corresponding EU application.||Same.|
|For International trade mark registrations under the Madrid system designating the EU, the UK government will take measures to ensure continued protection in the UK.||For International trade mark registrations under the Madrid system designating the EU, the UK is working with the World Intellectual Property Organisation (WIPO) to provide continued protection in the UK.|
|* The UK has joined the “The Hague system” for designs: as of 13 June 2018 it is possible to designate the United Kingdom in an international design application at WIPO.|
|Exhaustion||IP rights will remain exhausted for all goods which have been put on the market anywhere in the EEA.||Same (but for “a temporary period”).|
|Unregistered designs*||*While there is a separate unregistered UK design right under the Copyright Design and Patents Act 1988, this is a different type of right to the unregistered Community Design right and UK currently has currently no equivalent unregistered design right.|
|Existing unregistered Community Design rights will continue to be protected and enforceable in the UK for a term of protection at least equal to the remaining period of protection of the relevant Community right.||Same.|
|The UK Government will have to implement new legislation for this requirement.||Creation of a new UK “supplementary unregistered design right” which mirrors the characteristics of the unregistered Community Design but which will only protect designs that are first disclosed in the UK.|
|Geographical indications (GIs)||Holders of GIs which are protected in the EU will be entitled to use the GI in the UK, without re-examination and will be granted “at least the same level of protection” as provided under the existing EU regime.
This will apply only “unless and until” a future agreement between the EU and the UK enters into force and becomes applicable.
|A new UK GI scheme which will be established “broadly mirror the EU regime and be no more burdensome to producers“.
UK will no longer be required to recognise EU GI status and EU producers would be able to apply for UK GI status. To protect UK GIs in the EU, it would be necessary to file an applications on a third country basis.
|Patents||* UK national patents and European patents – via the European Patent Office (EPO) – are unaffected by Brexit since they are independent from EU membership.|
|SPC*||* Supplementary protection certificates (SPCs) are a specific part of UK patent law that comes from EU law.|
|SPCs will continue to apply in the UK provided SPC holders make a UK application for the extension of their rights prior to the end of that transition.||Same.|
|UPC||UK will be considered a member of the new Unified Patent Court during the transition period.||UK will explore whether it would be possible to remain within the UPC and UP system but if the UK needs to withdraw from the system it will ensure that UP protection in the UK is replaced by “continued protection in the UK”.|
|Copyright||Not discussed – see to the right.||International treaties on copyright will ensure that the scope of protection granted: (a) in the UK to copyright works created and/or owned by all foreign nationals and companies; and (b) in the EU to copyright works created and/or owned by UK nationals and companies, will remain largely unchanged.|
|Sui Generis Database rights*||*Sui generis database rights are a EU law creation, and post-Brexit a database created in the UK would no longer be protected.|
|Where a database qualified for protection in the UK before the end of the transition period, it will continue to be protected in the UK after its end, and rights owned by UK nationals that qualified for protection in EU Member States before exit will also continue to be protected after the end of the transition period.||UK originating sui generis database rights will no longer be enforceable in the EEA.
|Trade Secrets||The UK has implemented the EU Trade Secrets Directive|