EU Withdrawal Treaty – IP provisions

Finally there is hope on the horizon: the European Commission has proposed that all registered EU trade marks and designs should automatically convert to UK national rights after Brexit.  

The proposal is contained in the EU’s draft Withdrawal Agreement published late last week. It is only a draft and will be the subject of further consultations between all member states of the EU, the European Parliament and the UK, but it is a welcome development for brand owners as there is now a proposal on how EU trade marks and design rights will be treated post Brexit. 

The main points are:

1. All EU trade marks or designs registered before the end of the transition period will automatically become UK national registrations without re-examination or additional cost.
2. If an EU trade mark or design is declared invalid or revoked (which was ongoing on the last day of the transition period) the corresponding right in the UK shall also be declared invalid or revoked.
3. The UK rights will have the filing date (or priority date if appropriate) and the same renewal date of the corresponding EU right.
4. The subsequent UK trade marks shall not be liable to revocation on the ground that the corresponding EU trade mark had not been put into genuine use in the U.K. before the end of the transition period.
5. Owners will be able to surrender rights in the UK if not required (not just at renewal).
6. International trade marks which designate the EU will be deemed to also cover the UK.
7. The holder of an unregistered Community design which arose before the end of the transition period shall become the holder of an enforceable intellectual property right in the UK and have the same level of protection.
8. Any owners of pending EU trade mark applications will be given 6 months from the end of the transition period to claim the date of priority from the EU trade mark.

Even if the agreement is accepted by all EU member states, the European parliament and the UK, it will require legislation to be implemented in the UK.

As it is not final and could be subject to change, it remains our recommendation that owners file EU and UK rights now so that if marks face issues in the EU but not the UK, registrations can be obtained in the UK now.

The next steps are that the draft Withdrawal Agreement will now be sent to the European Council and the European Parliament’s Brexit Steering Group for discussion, before being transmitted to the United Kingdom for negotiation.

Watch this space for further developments!