The Giftware Association has been researching the rights of EU and community registered trademarks after Brexit. Brexit has brought with it many questions in relation to trade, import and export and with no clear answers yet and a back and forth between Brussels and the UK, one question that has been prominent amongst the minds of many of our designer members or members who have registered designs Is, ‘Will your EU wide IP rights still be protected if they were issued in the UK, after Brexit’? Fortunately ,we now have a bit more clarity on the subject, as on the ‘draft agreement’ of the terms of withdrawal of the UK from the EU, whilst this is still very much a draft there was a lot to be hopeful about in terms of trademarks and community designs following the UKs exit on 29th March 2019. Here are the key findings that will affect your rights and you will need to know
- A Transition period until 31 December 2020 will ensure that EUs intellectual property regimes will continue to apply within the UK. This transition period will mean ‘business as usual’ for intellectual property rights until the end of 2020.
- After the transition period, the UK has promised there will be an equivalent or ‘cloned’ version of EU trademarks and community designs registered or granted on or before 31 December 2020 without the need for re-evaluation. This should carry the same amount of protection as the current EU ones.
- EU trade mark or Community design applications which are pending at the end of the transition period will not be automatically cloned. The applicant will have a period of nine months from the end of the transition period during which it can file an application in the UK with the same filing and priority dates as its EU counterpart.
- The cloned UK trade mark shall not be revoked on the grounds that the corresponding EU trade mark has not been put to genuine use in the UK before the end of the transition period.
- The UK shall take measures to ensure that owners of international trade marks or designs registered through the Madrid system for the international registration of marks designating the EU or through the Hague system for the international deposit of industrial designs and obtained before the end of the transition period, will continue to enjoy the same protection in the UK.
- Following the transition period, the EU Intellectual Property Office (EUIPO) will not recognise the reputation of an EU trade mark which is based on use in the UK. Likewise, the UK IPO is unlikely to recognise a reputation claimed in respect of a UK trade mark if the reputation is claimed on the basis of the original EU trade mark outside of the UK. However, until the end of the transition period, a reputation claimed in respect of an EU trade mark will still apply to the UK.
- IP rights which were exhausted before the end of the transition period will remain exhausted both in the EU and in the UK.
- The cloned UK trade mark or design will enjoy the same protection period like its EU counterpart.
This draft has been largely welcomed by the IP community but there are still important issues that remain, the main one being that this is still a draft document, so in its very nature anything in it could live and die within the document as it goes through changes, and as Brexit is still very much up in the air, at least there are processes in place that cover IP and trademark rights.
To read more about the stance on IP issues then visit the official government website dedicated to letting you know any updates and the current state of the issue.