Brexit Update: New draft withdrawal agreement published

On Wednesday 14 November, the UK government published the Draft Agreement on the withdrawal of the United Kingdom from the European Union.

The agreement in principle outlines the terms of the UK’s departure from the EU on 29 March 2019 and follows months of negotiations between UK and EU officials.

The sections of the draft agreement regarding intellectual property reiterate much of what was proposed in the European Commission’s first draft of the withdrawal agreement published on 28 February 2018.

It confirms that there will be a transition period until at least 31 December 2020, during which time intellectual property rights will not change.

Trade marks, registered designs and plant variety rights

At the end of the transition period, the holder of a registered EU trade mark (EUTM), Community design (RCD) or Community plant variety right (CPVR) will automatically be granted a comparable right in the UK without any re-examination.

The comparable UK right will be granted free of charge by the UK Intellectual Property Office using existing data available on current EU registers and without any burden on the owner to undertake any administrative procedure. The right will be subject to renewal in the UK and the filing (or priority) date and renewal date of the new UK right will correspond to those of the original EU right.

If a EUTM, RCD or CVPR is revoked in the EU as a result of an administrative or judicial procedure that was ongoing on the last day of the transition period, the corresponding UK right will also be revoked, unless the grounds for revocation do not apply in the UK.

Applications for a EUTM, RCD or CVPR which are pending at the end of the transition period will have 9 months (or 6 months for a CVPR) to file a new application for an equivalent UK right. The UK application will have the same filing date and date of priority as the corresponding EU application.

The agreement also stated that the UK shall take measures to ensure that trade marks or designs designated in the EU via the Madrid or Hague systems respectively before the end of the transition period will continue to be protected in the UK.

Unregistered designs

Holders of Unregistered Community designs will be granted equivalent protection in the UK for at least the remaining term of the protection as would have been afforded under the EU provisions. This would appear to necessitate amendments to the current UK designs legislation to accommodate such equivalent rights.

Geographic Indications

Geographical indication (GI) status protects food and drink products from imitation and evocation throughout the EU (for example Champagne, Parma Ham, Scotch Whisky). 

Anyone who has the right to use GI status at the end of the transition period will be granted equivalent protection in the UK without any re-examination.

If protection for a GI status ceased in the EU after the transition period, protection would also cease in the UK.

Exhaustion of intellectual property rights

Exhaustion of rights refers to the limitations on an IP owner taking action in respect of the use of its goods once they have been sold with its consent.  An IP right that has been exhausted in both the EU and UK before the end of the transition period shall remain exhausted in both the EU and UK.  For example, if items of branded confectionery are sold with the brand owner’s consent in the EU before the end of the transition period, the brand owner cannot prohibit customers who bought the items from re-selling them to third parties in the UK or EU after the end of the transition period.

Representation before the EUIPO

The agreement confirms that UK Chartered Trade Mark Attorneys will be able to act as representatives before the European Intellectual Property Office (EUIPO) in ongoing proceedings after the transition period.

However, as per the earlier draft of the withdrawal agreement, it is still unclear whether UK practitioners will be able to act before the EUIPO in new matters following the transition period.

Following the publication of the draft withdrawal agreement, the Chartered Institute of Trade Mark Attorneys reiterated its desire for clarity on this matter.

Regardless of the outcome, Wilson Gunn will maintain a presence in the EU via its Dublin office and so will continue to be able to represent UK (and all other) companies before the EUIPO, even in the event of a “no-deal” Brexit.

Overview

Overall, the draft withdrawal agreement does not provide much more information about intellectual property rights than was already known. However, it does again reassure intellectual property rights holders that their EU IP rights will continue to be protected in the UK.  

It is important to note that the agreement is still in draft and is likely to be subject to further changes during the approval process. The political situation in the UK also means a “no-deal” Brexit is still a possibility and we previously outlined here how this could affect intellectual property rights.

We will continue to monitor the position and provide regular updates in this news feed. If you have any questions arising from this article or about how Brexit could impact your business please contact us.


© 2018 Wilson Gunn