It is already well known that Brexit will have no effect on the current arrangements for European patents, since the EPO is not an EU body; there is, at present, no EU patent. The same cannot be said, however, for EU IP rights such as trade mark and design registrations, and the following development therefore provides some welcome news on that score.
On 19 March 2018, the UK Government and the European Commission published a draft of the Agreement for the UK’s withdrawal from the EU, which includes an indication of substantive agreement of the provisions for ensuring continuity of EU Intellectual Property rights post Brexit - including, in particular EU trade mark (“EUTM”) registrations and applications and Registered Community Design (“RCD”) applications and registrations. These provisions are still subject to possible amendment during the continuing negotiations and subsequent ratification process, but they serve as an encouraging indication of the direction of travel for these important IP rights.
The draft Agreement envisages that there will be a transition period after the formal departure of the UK from the EU on 29 March 2019, which will last until 31 December 2020, and that during that period much of EU law – including the existing arrangements for EU IP rights – will continue to apply in the UK. When the transition period ends, draft Art. 50 provides that all existing registered EU IP rights (including EUTMs and RCDs) will in principle be duplicated as UK national rights, so as to ensure continuity of protection. It has yet to be decided, however, whether this transformation will be automatic or will require positive action on the part of the rights holder.
As for EU applications that are still pending but not yet registered on 31 December 2020, draft Art. 55 provides a 9 month period for applicants to file corresponding UK applications, preserving the EU filing date (as well as any claimed priority date and/or UK seniority date). Thus, it is envisaged that the deadline for filing UK conversion applications will be 30 September 2021.
Further general updates will appear on this site, as and when significant developments occur. For more specific advice, or if you have any questions on this or any other IP-related issue, please contact the partner with whom you usually deal or email firstname.lastname@example.org.
Bromhead Johnson 09.04.2018