The UK is to leave the EU (“Brexit”) in March 2019, but a transitional (“implementation”) period is expected to apply until at least 31 December 2020, in which existing IP rights obtained under EU law and therefore affected by Brexit will continue to have effect in the UK.
When Brexit becomes fully effective, EU unitary trade mark registrations and European Community designs will continue to have effect in the remaining 27 member states, but until then both EU unitary trade marks and Community designs likewise have effect in the UK. European patents are unaffected by Brexit as the European Patent Office is not an EU organisation.
On 28 February 2018, the European Commission published its first draft of the Withdrawal Agreement, setting out the terms upon which the UK will leave the EU. This suggested the 21 month transitional period during which European law would continue to apply in the UK, and during which time EU unitary trade marks and Community designs should continue to be recognised and enforceable in the UK. At the end of the transitional period, EU unitary rights would no longer cover the UK, but the European Commission suggested in the draft Withdrawal Agreement that such rights should be granted comparable protection in the UK automatically and with their filing dates, seniority dates and renewal dates to be maintained.
On 19 March 2018, the UK Government indicated its agreement both to the transitional (implementation) period and to the automatic creation of cloned rights in the UK upon Brexit from EU IP rights existing pre-Brexit and during the transitional period.
The proposals in the draft Withdrawal Agreement are closely aligned with the “Montenegro model” which was amongst the recommendations of the UK’s Chartered Institute of Trade Mark Attorneys (CITMA). CITMA have been working tirelessly to emphasise to the Brexit negotiators the importance of IP questions surrounding EU trade marks and Community designs and of the need for appropriate transitional provisions to be in place to prevent any loss of rights in the UK.
The Withdrawal Agreement is, of course, a draft and signature of a final version is still needed, but developments during the last month have been a step in the right direction and are to be welcomed by IP rights holders.
Regardless of any transitional arrangements, the UK is to ultimately leave the EU, so intellectual property owners need to be mindful of that and to discuss their specific post-Brexit business needs with their IP advisors. There are circumstances in which national trade mark applications should be considered in addition to or in place of EU registration, such as where use of a trade mark will not or does not extend to a substantial part of the EU, but such issues existed before the Brexit vote, just as they are relevant now.
We continue to monitor for developments in this important area, ready to inform our clients whenever there is real news to report.