What does European Commission’s draft Withdrawal Agreement mean for Intellectual Property Owners?
Some agreement within the draft Withdrawal Agreement has been reached with respect to EU-wide intellectual property. The agreements leave the IP system basically unaffected until the end of the transition period (31 December 2020), with EU-wide IP rights subsisting before the end of the transition period resulting in a comparable UK right which continues to apply until at least the expiry of the corresponding EU right where relevant. Having said this, there has been no agreement on important rights such as rights under Supplementary Protection Certificates (SPCs) and Unitary Patent rights, and the position in relation to exhaustion of IP rights after the transition period is unlikely to be finally determined until the trade arrangement between the EU and the UK has been agreed.
- At the end of the transition period, the owner of an EU-wide registered IP right (EU TM right, Community Design right, Community Plant Variety right) shall become the holder of a comparable UK right, without re-examination.
- Whether the registration of the UK right should be free of charge (as suggested by the draft Withdrawal Agreement) is subject to negotiation.
- The UK right will have the same filing date, priority date (and in the case of UK TM right, claimed seniority) as the corresponding registered EU right.
- The UK TM right will not be liable to revocation on the ground that the corresponding EU TM had not been put into genuine use in the UK before the transition period (whether UK only use prior to the end of the transition period will count for the purposes of assessing genuine use of an EU TM is not mentioned).
- The UK TM right can rely upon any reputation it has acquired in the EU before the end of the transition period and thereafter the use made of the mark in the UK (whether reputation of the EU TM in the UK prior to the end of transition period will count towards assessing reputation of the EU TM in the EU is not mentioned).
- EU-wide registered IP rights, as well as unregistered Community design rights and database rights that have arisen before the end of the transition period shall continue to apply in the same way in the UK.
- The term of protection in the UK to be at least equal to the remaining period of protection in the EU.
- Invalidation of a registered EU right or invalidation of a registered EU resulting from proceedings initiated before the end of the transitional period will invalidate the corresponding UK right.
- In the case of database rights however, continued protection will only be available for those that meet the qualification criteria.
- An application for a EU-wide IP right pending before the end of the transition period will have the right to claim the same priority date in respect of the corresponding UK application provided that it is filed during a period of 9 months (in the case of TM right and Design right) or 6 months (in the case of Community Plant Variety right) from the end of the transition period.
- International registrations of TM or design rights designating the EU before the end of transition period will enjoy continued protection in the UK.
- IP rights which have been exhausted in the EU and the UK before the end of the transition period shall remain exhausted in the EU and the UK.
Matters to be negotiated
- The draft Withdrawal Agreement suggests that EU law concerning SPCs for medicinal products and plant protection products should apply to applications still pending before the end of the transition period, and that the UK should provide the same level of protection for any certificates already granted.
- The draft Withdrawal Agreement suggests that rights under geographical indication, designation of origin or traditional speciality guaranteed subsisting before the end of the transition period should continue in the UK under UK law which provides for at least the same level of protection.
- The draft Withdrawal Agreement is silent on the EU and UK exhaustion policy that should apply to goods placed on the market after the end of the transition period. This is unlikely to be determined until the trade arrangement between the EU and the UK has been agreed.
- The draft Withdrawal Agreement does not mention what mechanism should apply to the UK portion of the Unitary Patent right, nor UK’s eligibility to remain within the Unified Patent Court system. However, the issue may be too premature to raise, given that the Unified Patent Court system has yet to be implemented.