Brexit: What impact will it have for IP rights holders?
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Brexit: What impact will it have for IP rights holders?
Brexit: What impact will it have for IP rights holders? There has been much speculation on what will happen to European IP rights in the UK following Brexit. Rights holders now have greater clarity following the publication of the draft withdrawal agreement under negotiation between the UK and the EU. Here is a brief synopsis of the main points agreed so far.
Russell Beard Partner russell.beard@laytons.com +44 (0)20 7842 8054
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Brexit: What impact will it have for IP rights holders?
Withdrawal agreement • The draft withdrawal agreement remains a draft: the
EUTMs • A corresponding new UK trade mark will not be liable to
points below have been agreed in principle, but may yet
revocation on the ground that the corresponding EUTM
change before a final deal is delivered.
had not been put to genuine use in the UK prior to the end of the transition period. • Owners of EUTMs who have acquired a reputation in
Transition period • A transition period is set to run until the end of December 2020; during that period, EU laws will continue to apply in the UK and EU IP rights will be unaffected.
the EU prior to the end of the transition period will be able to rely on that reputation when enforcing their rights under the corresponding UK trade mark, and after the transition the continuing reputation will be based on use in the UK. • A person who has filed an application for an EUTM which is pending at the end of the transition period will have the right to file an application in the UK for the same mark and in respect of the same goods or
After the end of the transition period EU trade marks and community designs
services, which preserves the filing and priority dates of the corresponding EUTM application. That application must be made within 9 months of the end of the transition period.
• When the UK breaks away from the EU, holders of registered EU trade marks (EUTM) or registered community designs will become the holders of corresponding new registrations in the UK. • Filing, priority, seniority and renewal dates for the
Community designs • Corresponding new UK design registrations will have a period of protection at least equal to the period
corresponding new UK rights will be aligned with those
remaining for the corresponding registered community
of the corresponding EU rights.
design.
• If an EUTM or community design is declared invalid or revoked in the EU as a result of a procedure which started prior to the end of the transition period, the corresponding new UK right will also be declared invalid or revoked with effect from the same date (unless the
International registrations • The UK will take steps to ensure that holders of
grounds for invalidity or revocation do not apply in the
international registrations of marks under the Madrid
UK).
system, or industrial designs under the Hague system, prior to the end of the transition period will continue to enjoy protection in the UK.
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Brexit: What impact will it have for IP rights holders?
Unregistered community designs • Holders of unregistered community design rights which arose before the end of the transition period will become the holder of an enforceable right in the UK which affords the same level of protection for at least an equivalent term.
Databases • Holders of a right in relation to a database which arose before the end of the transition period will maintain an enforceable right in the UK which affords the same level of protection in the UK for at least an equivalent term (provided the holder is a UK national, has habitual residence in the UK, or is an undertaking established in the UK or EU).
Exhaustion of rights • Rights exhausted both in the EU and the UK prior to the end of the transition period will remain exhausted both in the EU and the UK.
Points yet to be agreed • There are still important IP issues on which the UK and the EU are yet to reach agreement, including geographical indications of origin and registration procedures for corresponding new UK rights. Watch this space for further updates as negotiations progress.
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Brexit: What impact will it have for IP rights holders?
IP & Technology Our Intellectual Property & Technology (IPT) team offers the full range of IP services within this specialist area of law. We have particular experience with IP-rich businesses and high-tech clients: whether they be technology start-ups or multi-million pound international businesses, IP and IT are an integral part of their businesses.
Our Team John Abbott
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Nigel Parnell
Christopher Sherliker
Will Slater
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Consultant will.slater@laytons.com +44 (0)20 7842 8055
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This information is offered on the basis that it is a general guide only and not a substitute for legal advice. We cannot accept any responsibility for any liabilities of any kind incurred in reliance on this information.
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