Brexit draft withdrawal agreement: a growing consensus on intellectual property

Posted: 22/11/2018

The status of EU intellectual property rights in the UK post-Brexit remains an area of great uncertainty for many brand owners. However, the UK and EU Commission have revealed that they have agreed a large part of the intellectual property articles within the draft withdrawal agreement.

The latest publication of the draft agreement contains various colour-coded text to demonstrate which articles have and have not been agreed. Text highlighted in green has been agreed at negotiators’ level and will only be subject to technical legal revisions in the coming weeks. This text demonstrates that the following has been agreed in principle:

• Article 121 & 122: there will be a transition or implementation period from 29 March 2019 until 31 December 2020. During this period EU law will largely remain applicable to and in force in the UK;
• Article 50: EU trade marks (EUTMs) which are registered or granted before the end of the transition period will, after that date, be transferred to the UK without any re-examination. Also, the date of filing of the UK trade mark will be the date of priority of the EUTM;
• Article 52: any international trade mark or design registrations filed through the Madrid or Hague systems before the end of the transition period shall be protected under UK law;
• Article 53: unregistered Community designs arising before the end of the transition period will become enforceable intellectual property rights in the UK and will be afforded the same level of protection as in the EU. The right will also be protected for at least as long at the corresponding EU unregistered Community design;
• Article 54: rights in relation to databases arising before the end of the transition will remain an enforceable intellectual property right in the UK and will be afforded the same level of protection they would have had under EU law;
• Article 55: an EUTM which is filed but not granted before the end of the transition period shall have a right to file an application in the UK up to nine months after the end of the transition period; and
• Article 57: EU intellectual property rights which are exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted both in the EU and the UK.

Text in the draft agreement which has not been highlighted covers areas which are still be to be agreed between the UK and the EU. These include the following issues:

• Article 50(2): geographical indications, designations of origin and traditional specialities that are currently protected under EU law should have at least the same level of protection in the UK after the transition period;
• Article 51: the registration or grant of the intellectual property rights should be carried out free of charge by the UK Government and rights holders should not be required to re-apply or undertake any particular administrative procedure; and
• Article 56: any pending applications for Supplementary Protection Certificates at the end of the transition period should be construed under EU laws with any certificate granted providing the same level of protection as that provided under EU law.

The above should provide comfort to most brand owners on what will happen to their intellectual property once the transition period ends on 31 December 2020. Importantly, both sides agree that a registered EU intellectual property right should be converted into a corresponding UK right without re-examination. Rights holders also know that when it comes to their intellectual property rights, the status quo will be maintained until the end of 2020.

However, as always the devil will lie in the detail and there is still no agreement on how the conversion of rights will occur and where the administrative burden will lie. In addition, if the UK is to protect unregistered Community design rights once the transition period has ended, it will need to implement new legislation, as there is no equivalent under current UK legislation.

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