DRAFT BREXIT AGREEMENT: CONTINUED PROTECTION IN THE UK OF IP RIGHTS
The draft Brexit Withdrawal Agreement between the EU and the UK, which was published by the European Commission on 28 February 2018, provides for continued protection in the UK of registered or granted IP rights
The EU Commission Draft Withdrawal Agreement provides that holders of registered EU trademark rights, Community Design rights or Community plant variety rights shall become holders of corresponding rights in the UK after Brexit (Art. 50 of the draft agreement, hereafter ‘the draft’). Article 50 (1) of the draft states that the holder of a EU trade mark, design or plant variety right, “which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom”. The Article 50 (2) provides for the same rights with in relation to the geographical indications, designations of origin and traditional specialties. Such registration of corresponding UK rights will be free of charge and will require no administrative procedure, including no requirement for a UK address-for-service, at least up to first renewal of the right (Art. 51 of the draft).
Designations of the EU in a Madrid system or Hague system application before the end of the transition period shall benefit from the protection in the UK for their marks or designs (draft Art. 52). Unregistered Community design rights will become enforceable UK rights (draft Art. 53) and database rights will likewise become enforceable UK rights (draft Art. 54).
Article 55 of the draft proposes that pending applications for EU trade mark rights, as well as applications for Community plant variety rights, shall be dealt with by giving rise to an ad hoc right of priority in the UK for the same mark in respect of the same or similar goods or services, for a 6-month period from the end of the transition period.
With regards to the supplementary protection certificate (SPC), article 56 of the draft clarifies that where an application for an SPC is made in the UK before the end of the transition period but the procedure for grant of the certificate is ongoing at the end of that period, the applicable EU SPC regulations shall apply, and any subsequent granted certificate shall have the level of protection provided for by those regulations.
Finally, article 57 of the draft maintains that the rights that were exhausted in the EU and the UK before the end of the transition period under the conditions provided for by EU law shall remain exhausted both in the EU and in the UK.
These provisions of the draft agreement reflect the Commission’s current negotiating position on mutual recognition arrangements of IP rights.