Following a period of negotiations between the UK and the EU Commission, a draft Withdrawal Agreement on the UK’s exit from the European Union was published on 19 March 2018. The draft sets out plans for a transition period of 21 months ending on 31 December 2020, during which time EU-wide IP rights will continue to apply to the UK. A number of provisions regarding the protection and registration of IP rights in the UK following the end of the transition period are set out at Articles 50 to 57 of the draft Withdrawal Agreement, and certain of these have been agreed in principle.
We briefly summarise the key developments below:
- Continued protection of EU-wide registrations: After the transition period, the holder of a European Union trade mark (“EUTM”), Community registered design (“CRD”) and/or Community plant variety right (“CPVR”) granted before the end of the transition period shall, without any re-examination, automatically become the holder of a comparable registered and enforceable intellectual property right in the UK.
- Continued protection of international registrations designating the EU: Those who have obtained protection for international trade marks or registered designs designating the European Union prior to the end of the transition period will continue to benefit from protection in the UK.
- Continued protection of Unregistered Community Designs: Those benefitting from Unregistered Community Design rights which arose before the end of the transition period shall become the holder of an equivalent right in the UK, with the same level of protection and for at least the same term (i.e. 3 years).
- Continued protection of database rights: The holder of a database right which arose before the end of the transition period shall maintain an enforceable intellectual property right in the UK that affords them the same level of protection.
- Right of priority for pending applications: Those who have filed applications for an EUTM or CRD before the end of the transition period shall have a right to file an identical application in the UK for a period of 9 months from the end of the transition period, with the same filing date and priority date as the corresponding EU application. An application for a CPVR filed before the transition period will have an ad hoc right of priority in the UK for 6 months after the end of the transition period.
- Exhaustion of rights: IP rights which have already been exhausted within the EU (including the UK) before the end of the transition period shall remain exhausted following the transition period in both territories. The position thereafter is not addressed in the current draft.
- Invalidity/revocation proceedings: Where such proceedings involving EU-wide rights are in progress before the end of the transition period, any subsequent ruling that a right should be declared invalid or revoked will apply to the equivalent UK right.
- Genuine use: Comparable UK rights which are granted to replace EUTMs will not be liable for revocation on grounds of “non-use” if the relevant EUTM had not been put to genuine use in the UK prior to expiration of the transition period. However, further clarification is required on the reciprocal issue where an EUTM had only been used in the UK prior to expiry of the transition, and how this may affect validity of the rights outside of the UK.
Despite the notable progress, the draft Withdrawal Agreement lacks certainty regarding how comparable rights will be transposed in practice, specifically the costs and administrative burden associated with doing so. More generally, there are three key areas in relation to IP rights which have not yet been agreed upon between the UK and the EU. These are: (i) geographical indications, designations of origin and similar rights after the transition period; (ii) the registration procedure for certain IP rights (such as EUTMs, CRDs and CPVRs) in the UK; and (iii) pending applications for supplementary protection certificates in the UK.
Although a number of provisions in the draft text are subject to ongoing negotiation, the UK government has confirmed that the UK and EU negotiating teams are aiming to finalise the entire Withdrawal Agreement by October. In the meantime, increased lobbying in respect of the provisions requiring agreement is anticipated, including both the IP-specific arrangements and, more generally, other provisions affecting major UK industries. Commentators in the Life Sciences sector, for example, have indicated that medicines regulation should be a priority for the UK and EU in upcoming negotiations in order to ensure that Brexit does not have a negative impact on public health and patient safety.