This article was written on 21 January 2019. The content was relevant at the time of writing, but may have since changed. For our latest Brexit updates, please access our Brexit Hub.
The UK is set to leave the European Union on 29 March 2019. However, there remains much uncertainty over how, when and even if the United Kingdom will exit the European Union (“Brexit”). The draft withdrawal agreement is still being debated. The proposed transition period to the end of December 2020, has not yet been ratified. Detailed talks on the future relationship have not yet begun. At the start of 2019, it is impossible for businesses to know where the negotiations will lead this year. The good news is that as far as intellectual property is concerned there is a plan, giving some certainty for rights holders at least in the medium term. What happens thereafter turns on the future relationship struck between the UK and EU.
EUTMs post Brexit
The draft withdrawal agreement negotiated between the European Commission and the UK government, provides for rights holders to continue to enjoy protection in the UK post-Brexit. For owners of European Trade Marks (EUTMs), Community Registered Designs (CDRs) or plant variety rights, registered or granted before the end of the transition period, a comparable equivalent UK right should be conferred without re-examination. For EUTMS, the UK mark would take the filing/priority date of its EU ‘cousin’. Some restrictions will exist for revocation proceedings and if a mark owner seeks to establish a reputation for the UK cousin, that reputation can be one established in the EU. For CDRs and plant variety rights, the term of protection for the UK right would be at least equal to the remaining period under the EU right and the filing/priority date for the UK cousin would be the same as the EU right.
The proposal is that there should be no formal registration process for the creation of the equivalent UK rights. The UK right should be established via operation of law and a rights holder should not be expected to undertake any administrative procedures, nor be required to have a correspondence address in the UK (unless the right is later renewed in the UK, at which point the respective UK fees would be triggered). Comparable rights would be registered/granted free of charge by the relevant UK entity (e.g. the UKIPO) using data from the EUIPO, Community Plant Variety Office and the Commission.
Certain uncertainties
The UK IPO have provided guidance that the above will apply, even if there is no deal. As we look at the status of negotiations at the start of January 2019, Parliament is yet to vote on whether to accept the deal. As both sides in the negotiations have repeatedly stated, nothing is agreed until everything is agreed.
As a leading firm of European Trade Mark attorneys, Kilburn & Strode will continue to act for clients before both the UK IPO and the EUIPO, regardless of the Brexit outcome. We are in close contact with the UK IPO and CITMA, and we are monitoring the situation.
If you have any concerns or queries, please contact Ryan Pixton or your usual Kilburn & Strode advisor.