BREXIT | WHERE ARE WE NOW?
After more than 40 years’ membership, the UK has now formally left the European Union.
The UK’s departure is under the terms of an orderly Withdrawal Agreement concluded with the EU, which provides for a transition period during which EU law will continue to apply in the UK. The transition period is currently set to end on 31 December 2020, but may be extended at the request of the UK prior to 30 June 2020, pending conclusion of a further trade deal. Although the UK Prime Minister has indicated that the transition period will not be extended, it remains to be seen how negotiations will progress over the next few months.
IMPACT ON INTELLECTUAL PROPERTY
We summarise below how Brexit will affect key IP rights under the terms of the Withdrawal Agreement.
EU Trade Marks (EUTMs) & Registered Community Designs (RCDs)
EUTMs and RCDs will continue to have effect and be enforceable in the UK until the end of the transition period, or any extension thereof (exit day).
On exit day, EUTM and RCD registrations will be cloned into comparable UK registrations . These comparable registrations will retain the same filing, priority and/ or seniority dates as the corresponding EU rights. The process will be automatic and without cost.
Pending EUTMs and RCDs will not automatically be cloned; applicants will have 9 months from exit day to file new UK national applications, in order to retain the same filing, priority and/ or seniority dates. The usual official fees will apply and applications will need to go through the UKIPO’s examination process.
Comparable UK rights will be wholly independent of, and capable of being assigned separately from, the corresponding EU rights.
After exit day, UK nationals and businesses will still be able to own and file EUTMs and RCDs but these rights will no longer cover the UK. Applicants requiring registered protection of trade marks and designs in the UK will need to file UK national applications, or designate the UK separately in international applications made under the Madrid Protocol or Hague Agreement .
Unregistered Community Design (UCD) Rights
UCD rights protect designs first disclosed in the EU for a period of 3 years of being made available to the public.
Under the terms of the Withdrawal Agreement, UCD rights already in existence at the end of the transition period will automatically give rise to equivalent UK rights of at least the same duration.
After exit day, UK nationals and businesses will still be able to benefit from UCD protection, but only if the designs in question were first made available in the EU.
European patents are not affected by Brexit. The UK remains a signatory of the European Patent Convention (EPC), which is not governed by EU law. A number of countries from outside the EU (such as Norway and Switzerland) are already members of the EPC.
The pan-European Unitary Patent System has been postponed, but the UK government is working to try to ensure the UK’s participation if / when the system comes into effect.
Plant Variety Rights
New plant varieties that are distinct, uniform and stable may be protected in the U.K. Before Brexit, this could be done either at a national level, through the UK Plant Variety Rights Office (PVRO), or on a regional level through the Community Plant Variety Office (CPVO). The CPVO, which is an agency of the European Union, currently grants a single, unitary Community Plant Variety Right (CPVR) covering all member nations of the EU. A plant variety can only be protected through either a national right or a regional right and cannot receive dual protection in the same territory.
After exit day, CPVRs will no longer cover the UK. Plant breeders will then need to make two applications to gain the same coverage across the 28 EU member states currently covered by a single CPVR:
(1) one application for protection in the UK, by applying to the Animal and Plant Health Agency (APHA); and
(2) one application for protection in the remaining 27 EU member states by applying to the CPVO.
Pending applications for a CPVR will be treated as follows:
(1) CPVRs granted before 31 October will be protected under UK law, becoming UK rights; or
(2) for applications pending after 31 October, an application must be made to the APHA to protect the variety in the UK.
For more detailed guidance, see the following published by the Department for Environment, Food and Rural Affairs (DEFRA): https://www.gov.uk/guidance/plant-variety-rights-and-marketing-plant-reproductive-material-if-the-uk-leaves-the-eu-without-a-deal.
Supplementary Protection Certificates
Supplementary protection certificates (SPCs) are national rights which are granted by the UK Intellectual Property Office, but the underlying legislation is an EU regulation. Nevertheless, signs point to SPCs continuing in much the same fashion as before Brexit:
- Existing SPCs should not be affected.
- The Withdrawal Agreement indicates that SPC applications pending at exit day will be examined under the current framework and that SPCs granted based on those applications will provide the same protection as existing SPCs.
- The process for applying for SPCs will stay the same after exit day.
There may be some changes to the recently introduced manufacturing waiver. We will update on this when we know more.
Business here in the IP field will continue very much as usual for the next few months. However, anyone beginning a new trade mark or design filing programme, or involved in contentious proceedings at the EUIPO, should note our recommendations below.
We consider that dual filing new trade marks and designs in the UK and at EU-level is not routinely necessary for the time being. This advice may change as the end of the transition period approaches.
Nevertheless, parties may wish to consider dual filing in the UK as well as at EU level, where key brands and designs are at stake or if conflict is anticipated in the UK, to maximise the chances of having enforceable registered rights in the UK at the earliest opportunity. Dual filing is also recommended if there is a foreseeable risk of objection and final refusal of an EUTM before exit day (for example, based on grounds which do not apply to the UK).
We recommend a discussion is had, on a case by case basis, with your usual Greaves Brewster contact prior to filing.
We also recommend reviewing opposition and cancellation proceedings on-going at the EUIPO, especially those based solely on UK rights. Such UK rights may not pose valid bases for opposition or cancellation after exit day. Parties may wish to take steps to expedite or slow down the proceedings, for tactical reasons.
Greaves Brewster continues to follow the ongoing political and legal developments in the UK as they unfold. We continue to act before the EUIPO and will ensure our clients are kept fully updated on the practical implications of any changes impacting IP rights on our records.
This update is for general information and does not constitute legal advice. If you have any questions regarding these issues, or on a particular case, please get in touch with your usual Greaves Brewster contact.
[original article posted 25/05/19, updated 03/02/2020]