Since the deadline to agree a Brexit deal of 31 October 2019 was extended to 31 January 2020, the UK’s legal landscape has changed. The UK’s revised Withdrawal Agreement Bill has been approved by both UK and European lawmakers, and will allow the UK to leave the EU on 31 January 2020 with a deal in principle. This is not the end of the withdrawal process. We look at the effects on legislation, and the practical effects for IP rights holders.
Legal framework and processes
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After leaving the UK will immediately enter the “transition period” until 31 December 2020, where it will still be treated like an EU Member State. A clause in the Withdrawal Agreement Bill precludes any extensions to the transition period. As a matter of constitutional law this clause may be ineffective, and is generally interpreted as a statement of intent for the current government’s policy.
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During this transition period, the UK will attempt to negotiate new trade deals with the EU and other territories. Frequent reference to “negotiating a [trade] deal” should not be confused with the “[withdrawal] deal” already agreed. No trade deal at the end of 2020 will have far reaching practical effects on movement of goods between the UK and EU.
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At the end of the transition period, the UKIPO will clone any registered EU trade marks (EUTMs) and Registered Community Designs (RCDs) to create new, equivalent UK rights. These rights will enjoy the same seniority and priority dates. There will be no official fee. The UKIPO has stated that international trade mark and design registrations protected in the EU will also continue to enjoy protection as a separate UK right.
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Where an EUTM or RCD renewal date falls after the end of the transition period, early payment of the renewal fee at EUIPO, before 1 January 2021, will have no effect in respect of the equivalent cloned UK right. A separate UK renewal fee will be required.
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Owners of three-year unregistered community designs valid at the end of the transition period will enjoy continued protection in the UK under a new continuing UK unregistered design right for the reminder of the three-year term. For designs first disclosed in the UK after the end of the transition period, a new supplementary unregistered design right (SUD) may be available for a three-year term in addition to the longstanding UK national unregistered design right, which has different qualification requirements. Careful consideration should be given to disclosure, as first disclosure in the EU but outside the UK may not establish an SUD, subject to interpretation by the Courts.
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Patents will not be affected by Brexit. Supplementary Protection Certificates (SPCs) are subject to EU law, but the UK will be preserving all EU laws including the law governing SPCs. The UK government will maintain existing SPC rights already granted and ensure a smooth transition. It will continue to be possible to apply for SPCs.
Practical effects for IP rights holders and practitioners
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After the end of the transition period, the EU will not be able to refuse EUTM applications on the basis of an objection (absolute or relative) which applies only in the UK. English will remain an official language of the EU, and English language objections can still be issued.
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For EUTM contentious proceedings involving genuine use: Use of an EUTM, in the UK, before the end of the transition period will constitute genuine use of that EUTM; use of that mark, in the UK, after the end of the transition period, will not constitute genuine use of the EUTM.
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For UK trade mark contentious proceedings involving genuine use: Use of an EUTM, outside of the UK but within the EU, before the end of the transition period will constitute genuine use of a corresponding cloned UK registration; use of that mark outside of the UK but within the EU, after the end of the transition period, will not constitute genuine use of the cloned UK trade mark right.
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For an EU-wide right (such as an EUTM or RCD) subject to any agreements, assignments, licenses and security interests, effective prior to the end of the transition period, the agreement will carry over to the respective cloned UK right. However the wording of that agreement will require amendment to reflect the creation of the new UK right.
Kilburn & Strode, from offices in London, Munich, The Hague, and Amsterdam will be able to oversee any changes in protection and will continue to serve rights holders as representatives of UK and EU rights. If you have specific Brexit-related queries, please contact your usual Kilburn & Strode advisor.