On November 14th, 2018 Theresa May’s draft withdrawal agreement was approved by the British Government after 5 hours of deliberation by the Council of Ministers. A step has been taken towards securing a smooth withdrawal from the European Union (EU). However, two more steps need to be taken: obtaining an agreement of the 27 UE’s countries and, most importantly, the ratification of the agreement by the British Parliament.
If the withdrawal agreement is able to overcome both of these hurdles, what will be its impact on trademark rights?
There is no need to worry about intellectual property rights as EU directives have already been transposed into British legislation, and the level of protection remains unchanged.
For industrial property rights, on the other hand, the withdrawal agreement intends to preserve the EU legal framework. Therefore, the transition of the protection of EU law to UK law will be ensured by several measures.
- European trademarks and designs registered before December 31st, 2020 (the date EU treaties will no longer apply to the UK) will be automatically, converted into UK national rights, without re-examination or additional costs,
- EU trademark and design rights declared invalid or revoked in proceedings that were initiated prior to December 31st, 2020, will also be declared invalid or revoked in the UK.
- The holders of trademarks and designs registered before EUIPO (European Union Intellectual Property Office) with a pending application status at the time of the UK’s exit, will have 9 months as of the exit date to file a national application in the UK.
- Applications filed through the UK national office will benefit from the same filing date and priority date as the original application filed with EUIPO.
- Furthermore, the withdrawal agreement stipulates that IP rights exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted.
- However, European trademark owners will not lose their UK trademark rights due to lack of use of the European trademark in the UK before the end of the transition period.
The great innovation of the withdrawal agreement lies in a procedural clarification. The question that until recently remained unanswered by the withdrawal agreement was the process for obtaining protection in the UK. The new agreement now provides for a cooperation between European and UK authorities. Therefore, all the information necessary to renew rights, held by EUIPO, must be transmitted to the UK authorities. Thus, European IP rights holders do not need to submit any documents or pay additional fees.
These measures allow right holders to maintain protection in the EU by preserving an equivalent level of protection in the UK. . Nevertheless, if Brexit takes place without agreement, these transitional measures will not enter into force. For the moment such a possibility cannot be ruled out. That is the reason why every decision on EU trademark strategy must be considered very carefully. Dreyfus, trademark law experts, is able to assist you in the decision-making process in order to protect your intellectual property rights in this current climate of uncertainty.