Brexit withdrawal and intellectual property – update

November 16, 2018

With just over four months to go until Brexit (29 March 2019), the draft agreement on the UK’s withdrawal from the EU has now been published. Whether it survives intact is another matter as the agreement needs to be ratified by both the UK and the EU27. However, 15 of the 585 pages are dedicated to intellectual property. Key questions and answers are set out below: 

I only have an EU trade mark or design registration and do not have a separate UK trade mark or design registration – do I need to apply for a new UK trade mark after Brexit? 

Owners of EU trade marks or designs registered before the transition period ends will automatically obtain equivalent UK national registrations at no additional cost and without any examination. Therefore, owners of EU trade marks and design registrations will still have protection in the UK after Brexit. The transition period is set to end on 31 December 2020, but the Withdrawal Agreement makes possible a single extension of a currently undefined length.

The equivalent UK national registration will have the same filing date, priority date (if applicable) and first renewal date as the EU trade mark/ registered design. The UK equivalent design must be given at least the same remaining duration as the EU right.

Brexit has happened and my EU trade mark or design registration is declared invalid or revoked due to a procedure that started before the transition period ended and continued afterwards. What happens to my equivalent UK right? 

The equivalent UK right will also be declared invalid or revoked unless the grounds on which it was invalidated/revoked are not applicable in the UK.

I had not been using my EU trade mark in the UK before the transition period ended – can my equivalent UK trade mark be attacked (revoked) for the EU trade mark not being used in the UK? 

The equivalent UK trade mark cannot be revoked for the EU trade mark not having been used in the UK during the transition period (but the UK right may become vulnerable to revocation after five years of its non-use). 

What about unregistered Community design rights subsisting before the transition period ended? 

The holder of such a right will have an equivalent right in the UK with the same level of protection and the duration will be at least equal to the remaining duration of the unregistered Community design.

I have an international (Madrid) trade mark or (Hague) design which designates the EU – will it be deemed to also cover the UK?

Yes. However, it is unclear how this will work at present. 

Before the transition period ended, I had an application for an EU trade mark or registered design that was pending (i.e. it was given a filing date) but I would now also like a UK right.

Up to nine months after the transition period ends, the applicant can claim priority from the EU application to file the same trade mark/ design application in the UK which would be given the same filing date as the EU application. In other words this would not be automatic. 

What about IP rights which were exhausted in the EU and UK before the transition period ended? 

IP rights which were exhausted in the EU and UK before the transition period ended under the conditions under EU law will still be exhausted in the EU and UK.

And EU or UK IP rights which were not exhausted before the transition period ended? 

This depends on the long-term trade deal negotiated between the UK and the EU. If a “Norway-style” option is ultimately adopted, it is probable that EEA-wide exhaustion will remain. (The UK Government has also indicated this will be the default option in a no-deal scenario).

What will happen to my customs Application for Action (AFA) based on an EU trade mark and/or Community design? 

Although the Withdrawal Agreement is not entirely clear, UK customs should continue to enforce the AFA during the transition period. What happens after the transition period is up for negotiation.

What about patents? Should I give up on the UK being part of the Unitary Patent (UP) system and the Unified Patent Court (UPC)? 

Not necessarily. The UK ratified the UPC Agreement in April, but the system will not go live until Germany ratifies (its ratification has been held up by a constitutional legal challenge). Opinion 1/09 of the CJEU leaves a glimmer of hope that the UK can remain part of the UP system if it respects the primacy of EU law and allows for CJEU references from its UPC division. In general, the UK will continue to be bound by EU law and CJEU jurisdiction until the end of the transition period. This might allow time and flexibility for negotiation of bespoke arrangements to allow the UK to remain a member of the UP system.

European Patents will continue to be designated and enforced in the UK; the European Patent Convention is not connected with the EU.

Can I keep the protection of the Supplementary Protection Certificate on the UK designation of my European Patent? 

As long as the application was submitted before the end of the transition period, yes: the patent will receive an SPC extension in the UK. The UK Government has indicated that this will also be the case in a no-deal scenario. 

What about new EU laws passed during the transition period?

In broad terms, until the end of the transition period new EU Regulations and Directives that have passed their implementation date will become law in the UK. So, for example, it is possible that the proposed Digital Single Market Directive will become law in the UK in future.

The position on trade secrets is now settled. The Trade Secrets Directive was implemented into UK law on 9 June 2018.

The above position is very similar to that under the draft Withdrawal Agreement published in March 2018 (see our analysis here). As indicated above, a “no deal” scenario remains possible given the uncertainty as to whether the Brexit deal will be accepted by the UK parliament; the UK has published some guidance on what would happen in this event (see here).


Related pages:

Brexit Lawyers more

Intellectual property more

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