Latest Developments in the European Commission’s Draft Withdrawal Agreement – Trade Marks and Designs

The European Commission has now published their draft withdrawal agreement outlining the path of the UK’s withdrawal from the EU, providing some much needed clarity in this area. Articles 50 to 57 of the draft agreement detail the effect of Brexit on intellectual property matters in both the EU and the UK and there is an indication as to which points have been agreed between the states. Most significantly, under the draft agreement, equivalent (and automatic) UK national rights will be granted (bearing the same priority date) in respect of registered EUTMs and Designs, which are in existence prior to the expiration of the transition period (31 December 2020).

President of the UK Chartered Institute of Trade Mark Attorneys (CITMA) Ms Kate O’Rourke has commented that these provisions should now put an end to applications being filed in both the UK and EU as protection barriers against Brexit uncertainty, which had caused huge increases in applications since June 2016. However Ms O’Rourke also commented that she is surprised agreement on whether this process should be free-of-charge (under Article 51) has not yet been decided between the UK and EU.

In respect of applications, which remain pending on the final day of the transition period, Article 55 provides a grace period of 9 months for applicants to file equivalent UK applications and claim protection back to the original EU priority date. Instead of all pending applications staying in the EU system until grant, post-31 December 2020, Ms O’Rourke has explained she was shocked to see the UKIPO agree to this 9 month priority period as it is likely to be burdensome for smaller businesses.

There are still many more major areas of concern in respect of the continuity and migration of intellectual property rights between the EU and UK, including whether cloned rights post-Brexit will be free of charge, clarity on exhaustion of rights, agreement on Geographical Indications and whether, on exit, UK companies will need to give a UK correspondence address for their new UK right.

So what does this all mean for rights holders? Whilst the draft withdrawal agreement is still subject to further discussions between the UK and EU, this latest set of agreed provisions provides holders of registered rights with a level of comfort that their registered rights will continue to be protected post-Brexit (albeit with a level of uncertainty over costs and costing structures). In relation to owners of pending applications, (as things stand) positive action will need to be undertaken prior to 31 December 2020, to actively migrate pending EU applications (to UK national applications) in order to keep the same priority date.