What will happen with my IP rights after Brexit?

In March 2018, the EU Commission and the UK published a draft Withdrawal Agreement outlining the current status of the Brexit negotiations between the EU and the UK. Luckily, there seems to be no reason to worry for IP holders in the EU as the provisions set out in the draft agreement aim to produce a smooth, predictable and low impact transition for IP holders.  

A majority of the terms in the draft agreement have already been agreed upon, while some are still being negotiated. The EU and the UK have for example preliminarily agreed upon a transition and implementation period from the date of the agreement until 31 December 2020. During this period, EU law will continue to apply in the UK.

The parties have also agreed that EU trademarks, Community designs and Community plant variety rights that have been granted before the end of the transition period will obtain equivalent registered and enforceable rights in the UK without any re-examination. These new UK registrations will benefit from the same filing or priority date as the corresponding EU registration. Further, where any EU registered right is revoked or declared invalid as a result of proceedings pending on the final day of the transition period, the equivalent UK right would also be declared invalid or revoked. Also international registrations designating the EU that have obtained protection before the end of the transition period will continue to have protection in the UK. An application for an EU trademark or design pending on the final day of the transition period will not, however, automatically be converted into a UK trademark. The Applicant will instead have the right to file an identical UK application within a nine month period from the end of the transition period, in order to have the same filing and priority date as the EU trademark or design.

Other points that the parties have agreed upon are for example that the holder of a reputed EU trademark will be able to exercise equivalent rights in the UK with regard to the converted UK trademark until the end of the transition period. Moreover, the converted UK trademark cannot be revoked if the corresponding EU trademark would not have been put into genuine use in the UK before the end of the transition period.

Also, databases will have the same level of protection in the UK as EU databases, if they arose before the end of the transition period. IP rights that have been exhausted in the EU and the UK at the end of the transition period under EU provisions will continue to be exhausted in both territories. When it comes to unregistered designs, these will have the same level of protection as the corresponding Unregistered Community Design for at least an equal remaining period of time, if the right existed prior to the end of the transition period.

The EU Commission has proposed that the conversion of an EU trademark to a UK trademark should be free of charge, but the UK has not yet accepted this proposal, nor have the parties agreed on the registration procedure for the conversion. Some other issues that the parties have not yet agreed upon are geographical indications and pending applications for Supplementary Protection Certificates in the UK.

Overall, the draft Withdrawal Agreement indicates that the exit will be relatively undramatic and straightforward for IP holders. Some questions are, nonetheless, still unanswered and we are therefore following the further discussion and negotiations in relation to the Withdrawal Agreement with great interest.

// Rebecca Fassihi & Jesper Sellin