One Step Closer to the Agreement of Trademark and Community Design IP Rights Post Brexit

On March 19, 2018, the European Commission published a draft agreement on the withdrawal of the United Kingdom (UK) from the European Union (EU).

This week, the Orrick IP Landscape blog takes a detailed look at the draft agreement and breaks down what you need to know.

 

 

 

Agreed-Upon IP Rights After 2020

  • An EU trademark holder will become the holder of a UK trademark, consisting of the same sign, for the same goods or services. More specifically:
    • The trademark shall enjoy the date of filing or the date of priority of the EU trademark; and
    • It is unnecessary for the EU trademark owner to have put the trademark into genuine use in the UK territory before the end of the transition period.
  • The owner of a registered Community design shall become the holder of a registered design right in the UK for the same design. The European Union Intellectual Property Office (EUIPO) currently issues registrations for Community designs to protect the appearance of a product.  The current EU design regulation requires a Community design to be new and to possess individual character (i.e., the overall impression differs from any other previous design).  Registered Community designs are protected against similar designs even if they were independently developed in good faith.
  • If a trademark or Community design right is declared invalid or revoked in the EU as a result of an administrative or judicial procedure which was ongoing on the last day of the transition period, the corresponding right in the UK will also be declared invalid or revoked.
  • The renewal date of a trademark or Community design issued before 2020 will be the same renewal date in accordance with EU law.
  • Natural or legal persons who obtained protection for international registrations of trademarks or Community designs pursuant to the Madrid system or the Hague system before the end of the transition period will enjoy protection in the UK after the transition.
  • For pending trademark and Community design applications filed in the EU before the transition period, an applicant is entitled to the same UK filing date and date of priority as the corresponding application filed in the EU. However, applicants must file a UK application within nine months of the transition period.
  • Unregistered Community designs will remain enforceable in the UK for the remaining period of protection. An unregistered Community design is a design that an IP owner chooses to commercialize without registering it with the EUIPO.  The scope of protection only prevents commercial use of an intentional copy of the unregistered Community design for three years without the option to extend the protection.

What’s Still to be Decided?

  • The EU proposed that the registration or grant of IP rights for trademarks and Community designs should be carried out free of charge by the relevant entities in the UK. This term is still under negotiation.
  • The EU proposed that holders of IP rights for trademarks and Community designs should not be required to undertake any particular administrative procedure to secure their continued rights. This term is still under negotiation.

Takeaway

IP owners should be aware that the UK and the EU have come to an agreement about continued IP rights as to trademarks and Community designs in the UK post-Brexit, but the cost and procedure under which these rights will be ensured is still up for debate.  Although the trademark and Community design owners’ rights will remain intact in the UK until the end of 2020, they should be on the look-out for the final Agreement, which will lay out the final procedure for the continued enjoyment of such rights.