How would a no-deal Brexit affect the protection of EU intellectual property rights in the UK?
26th September 2018
The UK government issued guidance on 24 September 2018 confirming that EU trade mark and design rights will continue to be protected in the UK in the event of a no-deal Brexit.
The UK is currently covered by two systems for protecting trade marks and designs, a domestic system that covers just the UK, and an EU system that covers the UK along with all 27 other EU members states. The EU system will cease to cover the UK following the UK’s withdrawal from the EU, although it is common ground amongst all concerned that EU rights should continue to be protected in the UK. The only question is how this will be achieved.
The Draft Withdrawal Agreement published earlier this year sets out a credible proposal for continued protection of EU rights in the UK post-Brexit, including a transitional provision that would keep the UK as part of the EU trade mark and design registration systems until 1 January 2021. However, if an agreement is not reached by 29 March 2019 (ie a “no-deal” Brexit), the terms of the Draft Withdrawal Agreement will not take effect and the UK will need to take unilateral action to ensure that these EU rights continue to be protected in the UK after 29 March 2019. It is still widely anticipated that an agreement will be reached. Although, as part of its preparation for a no-deal scenario, the UK government issued guidance on 24 September 2018 setting out how EU trade marks and designs will continue to be protected in the UK in the event of a no-deal Brexit, and the full text of this guidance is available here.
The government has confirmed that an equivalent registration under the domestic UK system will be issued for all existing EU trade mark and design registrations. The creation of these equivalent rights is intended to be at “minimal administrative burden”, although no guidance regarding what will actually be required has been provided. Nevertheless, the government has indicated that it will provide right holders the option to opt out of the creation of the equivalent UK right, suggesting that the creation of these rights may otherwise take place automatically.
For applications for EU trade mark and design registrations that are pending at the time of the UK’s withdrawal from the EU, applicants will have nine months in which to apply to protect the trade mark or design in the UK in order to maintain the date of filing of the EU application in the UK.
The government also intends to maintain protection in the UK for trade mark and design rights covering the EU via the Madrid and Hague systems and will work with WIPO, the organisation that administers the Madrid and Hague systems, in order for this to be achieved.
In addition, unregistered Community design right that arose before Brexit will continue to be respected in the UK for the remaining period of protection. In addition, the government intends to create a new unregistered design right in UK law that will provide the same rights as current unregistered Community design right. This would be valuable as unregistered Community design includes the protection of surface decoration while existing UK unregistered design right does not.
The government has also indicated that provision will be made regarding the status of legal disputes involving EU rights that are ongoing before the UK courts and more information will be provided on this before the UK’s withdrawal from the EU.
In summary, although a considerable amount of detail is still lacking, the UK government has confirmed that there will be no loss of protection for intellectual property rights in the UK even in the event of a no-deal Brexit. However, it may be necessary for right holders to take particular actions in order to avoid rights being lost, including ensuring that all pending EU applications are refiled in the UK within the permitted nine-month period.
Adamson Jones will keep its clients and contacts fully informed of developments, including any actions that need to be taken to ensure continued protection for intellectual property rights in the UK.