Brexit – More clarity regarding the future of intellectual property rights in the United Kingdom
Following the announcement of the United Kindgom leaving the European Union, the question remained regarding
what would happen to European industrial property rights. The Draft Withdrawal Agreement dated February 28th, 2018 sheds some light on these questions
First and foremost, we should note that a transition period is planned, spanning from March 29, 2019 to December 31, 2020, during which the United Kingdom will remain subject to the European Union’s rules of law. Once this date has passed, however, national British law will be the only applicable one in regards to industrial property in this country.
1. On principle : continued protection in the United Kingdom
1.1. Legal considerations
The Draft Withdrawal Agreement states that all European trademarks and designs will remain valid on the United Kingdom’s territory as long as they are registered before the end of the transition period, supposedly without being subject to a new examination procedure. These rights will offer the same scope of protection in the United Kingdom as they do on the rest of the European territory, meaning that they will cover the same goods and services, under the same sign. The same goes for designs.
This also applies to trademarks and designs registered through the Madrid and The Hague systems (« international » trademarks and designs producing effects in the European Union) and for unregistered designs as long as they are disclosed before the end of the transition period.
The continuity of the legal regime also applies to the exhaustion of the aforementioned industrial property rights. Indeed, if an industrial property right is exhausted within the European Union before the end of the transition period, it will remain exhausted on the United Kingdom’s territory.
Likewise, industrial property rights subject to administrative or judicial proceedings in cancellation, limitation or other will suffer the effects of the rendered decision, even if it is issued after December 31, 2020, as long as the proceedings were initiated before that date.
1.2. Administrative considerations
Regarding administrative matters for trademarks and designs, the expiration date of the new titles (and thus their renewal date) will be identical to that of the European Union title on which they are based.
The owner of the rights will retain, for its new British trademark, the seniority of the United Kingdom mark claimed within its European Union trademark.
1.3. Financial considerations
The Agreement also seems to provide that the granting of replacement national titles in the United Kingdom will not imply the payment of official taxes. This is, however, still being debated.
2. Unanswered questions
If the Agreement provides for first ideas of the future of trademark and design rights in the United Kingdom once it has left the European Union, the fate of designations of origin and geographical indications (highly harmonized at the European level) remains unclear.
The same goes for supplementary protection certificates, over which no consensus has been found between the United Kingdom and the European Union.
As a consequence, even though the Draft Agreement offers a few answers regarding the fate of industrial property titles once Brexit has happened, it does not provide the owners of rights with the answers to all their questions.
At this stage, by precautions, we reiterate our recommandation of proceeding (at least for your new and your most important trademarks) to distinct filings in the European Union and the United Kingdom.