Draft BREXIT Withdrawal Agreement – some good news for EU IP holders

Agreement offers free of charge ‘porting-in’ of EU rights to the UK post-BREXIT

Whilst there’s a lot of discussion around the 14 November 2018 draft agreement (found here) there is some good news in it for holders of EU Trade Mark and design rights.  Pages 88 to 102 of the draft agreement set out the position for various intellectual property issues and includes the previously-discussed suggestion that holders of registered EU IP rights will automatically obtain comparable rights in the UK – this means that effectively holders of registered EU Trade Marks, Community Designs and Community Plant Variety rights will automatically obtain equivalent registered rights in the UK.  Even more pleasingly, the setting up of the new comparable UK rights will be carried out free-of-charge by the relevant UK bodies, using the data available in the registries of the European Union Intellectual Property Office, the Community Plant Variety Office and the European Commission.  No action is required by the EU right holder. Following the automatic registration in the UK, renewal fees will become payable to the relevant UK office to maintain the UK registration in force.

Similar provisions are also included for geographical indications, designations of origin, traditional speciality guaranteed or traditional terms for wine, as well as for database rights, unregistered trade mark and design rights and supplementary protection certificates.

As European Patents are not EU rights they will not be affected by BREXIT and European patents will continue to cover the UK (and a number of other non-EU countries).

Notably, for the automatic ‘porting’ of EU Trade Mark and Community Design rights into the UK to occur, the relevant EU registrable rights must have been registered by the end of the transition period.  However, if such rights were filed in the EU before the end of the transition period but are not yet registered, there is a 9-month period from the end of the transition period by which the owners of said pending applications can apply themselves to file the same mark or design in the UK and benefit from the original filing, priority and seniority dates where applicable (this however would not be an automatic, free-of-charge creation of rights).  With this in mind, if you are considering filing an EU Mark, you may want to do it sooner rather than later to ensure it is registered in time for the free automatic UK transfer to occur.

It’s also worth noting that owners of ‘ported’ rights will not be required to have a correspondence address in the United Kingdom in the 3 years following the end of the transition period.  However, for parties outside of the UK it may be worthwhile considering including a UK correspondence address in plenty of time before the 3 years runs out.

If you would like more information about any of the above, please contact Claire Rutherford (claire.rutherford@definitionip.com) or Dan Mercer (dan.mercer@definitionip.com) on 0191 603 1101 (UK) or Eimear Sampson (eimear.sampson@definitionip.com) on (01) 9697808 (Ireland).