The consequences of Brexit in terms of industrial property rights in the Union

Des précisions quant au sort des titres de propriété industrielle face au BrexitThe European community’s greatest achievement in terms of intellectual property is surely the regional territoriality of Union rights as emerging from regulations no. 2017/1001 of the European Parliament and Council of 14 June 2017 on the EU trade mark. Extending a territoriality that was originally national to a European Union level, these regulations testify to the gradual but increasingly manifest construction of a fully-fledged “European” intellectual property right. Until then, Union rights holders could, through the unitary effect, claim protection of ownership extended to the twenty-eight Member States. However, Britain’s notification on 29 March 2017, announcing the United Kingdom’s intention to leave the European Union struck a blow to this standard building. For in spite of the potential subsistence of certain European achievements through the local laws transposing the directives, which will continue to apply, the main effect of this withdrawal will be to put an end to the direct application of European regulations inside the United Kingdom. We would add that the continuance of the achievements absorbed by British legislation must be relativised as, henceforward framed and defended on a national scale, they will be more exposed to potential amendments in the name of local interests. It should be specified that European patents shall not be directly affected by the United Kingdom’s withdrawal insofar as the European Patent Convention is not part of the legal order of the European Union.

The European Commission, in a notice published on 1st December 2017  confirmed that EU trade marks and Community designs registered in accordance with Union law will simply no longer have effect in the United Kingdom as from 30 March 2019, in compliance with article 50(3) of the Treaty on European Union. In the light of this it is regrettable, mainly for questions of legal security, that there is no withdrawal agreement that would permit an organised and efficient transition. The situation changed on Monday 19 March 2018. The European Union and the UK effectively reached a much-awaited agreement on the terms of the transition. Without actually substantially altering the legal consequences of the withdrawal, it provides for the postponement of the effective date till 1st January 2021. Such a postponement is welcome as it will allow owners of Union rights to anticipate more serenely the restriction of the field of protection pertaining to their rights. In respect of these transitional provisions, article 50 envisaged a 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 on 19 March 2018 by the British government, a legal mechanism enabling the automatic transformation of Union titles, effective before 31 December 2020, into domestic British rights considered equivalent. Such a system turns out to be opportune as, benefiting rights holders, it will compensate for the restriction of the “origin” unitary field of protection. The implementation of such a mechanism remains, however, still uncertain to date.

Concerning the right of priority, article 55 of the withdrawal agreement allows for the possibility of registering a British design trade mark equivalent to a Union right if the application was submitted in the nine months following the end of the transition period, which means up until 30 September 2021. Also, under the terms of article 52, industrial property rights acquired within the scope of the Madrid and The Hague systems designating the European Union before the end of the transition period, shall retain their protection within the United Kingdom.

In conclusion, it is necessary to keep in mind that Union trade marks and designs being registered beyond 31 December 2020 shall only cover the twenty-seven Member States, therefore excluding the United Kingdom. Also, given the uncertainty surrounding the implementation of the automatic mechanism for the transformation of Union rights into equivalent British rights, owners of Union trade marks or community designs are strongly recommended to anticipate by registering in parallel with EUIPO, with the UK intellectual property office (UKIPO), thereby nonetheless running the risk of having two property rights covering the United Kingdom in 2021.