Author: Catherine Wolfe
19 March, 2018
Boult Wade Tennant is pleased to report that on 19 March 2018, the UK and EU agreed to transition terms.
These ensure that there will be no substantive changes in relation to the present Intellectual Property framework until 31 December 2020. That date is later than the original date of 29 March 2019, which date is two years from when the UK served formal notice of withdrawal from the EU under Article 50(2) of the Treaty on European Union.
Intellectual Property: summary
Much is to be decided, but we can set out the key points as they presently appear.
The EPO is not part of the EU and Brexit does not affect patents granted through the EPO system.
European Union Trade Marks and Registered Community Designs
European Union Trade Marks and Registered Community Designs are both granted by the European Union Intellectual Property Office (EUIPO), situated in Alicante, Spain. These are unitary rights which cover the entire EU and therefore, from 1 January 2021, they must cease to cover the UK.
However, it is presently envisaged by the UK and EU that all registered EUTM and RCD registrations in place at 31 December 2020 will be automatically “cloned” into identical rights at the UKIPO, with no action being required by their owners. This plan is described as “agreed at negotiators’ level” in the Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community, published by the UK Government on 19 March 2018.
If an EUTM is still in the pending phase at 31 December 2020, then its final registration will cover only the EU27 and will not cover the UK. However, it is presently envisaged that its owner will have a right to file, for nine months from the end of the transition period, that is to 30 September 2021, a UK national which claims “priority” from the pending EUTM, and which maintains any priority or seniority which that pending EUTM claims.
Should I re-file now?
Not necessarily. The great majority of marks and designs filed in 2018 will reach registration in 2018 or 2019, and thus automatically be cloned into EU27 + UK rights at the end of 2020, if all goes well.
However, the only way to be “Brexit-proof” is to file (or re-file) at the UKIPO in parallel to the EUIPO. Some Trade Mark and Design owners are now seeking that comfort and we are happy to advise on this in individual circumstances. Some are concerned that “nothing is agreed until everything is agreed”, so the “cloning” mechanism is not certain; many Intellectual Property decisions have not been made in this Brexit process, including the processing of matters which are eg under opposition at 31 December 2020.
It is important to be aware, however, that if the Brexit transition is smooth, such owners who have taken the “belt and braces” step of re-filing, or filing in parallel, might in 2021 have two registered rights covering the UK: the re-filed right and the cloned right.
If you wish to discuss any Brexit related matters, then please do not hesitate to contact your usual attorney.