The UK and EU have taken their first steps towards clarifying how intellectual property rights will be affected by Brexit, but there is still much to be resolved, writes Boase Cohen & Collins Associate Allison Lee. 

Hong Kong, 14 June 2018: While the United Kingdom’s impending exit from the European Union continues to be a source of much speculation, uncertainty and controversy, we are at least beginning to see some directions on intellectual property issues.

On 19 March 2018, the UK and EU published their latest Draft Withdrawal Agreement setting out the terms for Brexit, highlighting where there is full agreement, agreement in principle and no agreement. The document runs to 129 pages and includes a chapter devoted to intellectual property which goes some way to addressing uncertainties over rights and obligations regarding trade marks and designs.

The two sides have agreed a transitional period lasting from 29 March 2019 – the day the UK formally leaves the EU – to 31 December 2020. During this transitional period, there will be no substantive changes in relation to the current IP framework. Thereafter, the key points are as follows:

  • The UK and EU are in full agreement that once the transitional period ends, Registered European Union Trade Marks and Community Designs will be “cloned” into separate UK registrations without taking any additional steps or payment of fees. Effectively, these registrations will enjoy the same enforceable rights in the UK that they have in the EU with the same validity period as the corresponding EU registration.
  • Any pending EU Trade Mark applications after the end of the transitional period will only be protected in the remaining 27 EU member countries. However, the trade mark applicant can file a corresponding application in the UK within nine months from the end of the transitional period and such application shall have the same filing date and date of priority as the corresponding EU application.
  • International trade mark registrations that are protected in the EU before the end of the transitional period will be allocated an equivalent UK protection.
  • Where EU trade mark invalidation or cancellation proceedings have commenced prior to the last day of transition period, and the registered mark is declared invalid or revoked after the end of transition period, the corresponding registration in the UK shall also be declared invalid or revoked.  The effective date of such invalidation or cancellation shall be the same date as the EU decision.

As an aside, it should be noted that patents will not be affected by Brexit. These are covered by the European Patent Convention, which is not part of the EU.

However, while we have clarity up to a point, there remains much to be decided. For instance, the two sides have yet to find common ground on geographical indication – a name or sign used on products, usually in the agricultural industry, which corresponds to a specific place of origin, such as town, region or country. Cornish pasty, Parma ham, Roquefort cheese and Cognac are prime examples of this. EU law is strong on such rights whereas the UK does not have an equivalent system of protection.

Amid these welcome developments, it should be stressed that the Draft Withdrawal Agreement is precisely what it says, a draft, and there is no guarantee it will be signed. Some observers believe it could be ratified just before Brexit day, ie 29 March 2019. If it is NOT signed, then there is no transitional period and the post-Brexit landscape takes effect immediately.

What does all this mean in practical terms for owners of EU trade mark and design applications and registrations?

  • UK trade mark rights shall continue for EU registered trade marks and designs.
  • You will need to appoint two agents – an EU agent to manage your EU portfolio and a UK agent to manage your UK portfolio and you should do this before 29 March 2019. Prior to Brexit it was sufficient to have just one to manage both.
  • If you have new EU filings in the horizon seek to file them as soon as possible rather than waiting to see what happens.
  • Likewise, invalidation and cancellation proceedings should be commenced before 29 March 2019 or, if the Draft Withdrawal Agreement is signed, before the end of the transitional period.

Given the continued uncertainty surrounding significant portions of IP law in a post-Brexit world, it is little wonder the subject is commonly debated. Certainly, it was a regular talking point at the world’s biggest global brand, trademark and intellectual property conference, the 140th Annual Meeting of the International Trademark Association, held recently in Seattle and which I attended with Boase Cohen & Collins Partner Susan Cheung.

The conference devoted a General Session to Brexit with speakers from private practice and industry giving their thoughts. As well, there were at least four so-called Table Topics – group discussions – on the theme and it was a regular talking point at the many receptions and other social gatherings that are such a feature of the Annual Meeting.

For the present, the Draft Withdrawal Agreement has brought some welcome guidance on certain issues while we should bear in mind that it has still to be ratified and that there are other areas where much work remains. IP professionals continue to take a keen interest in the developments.