(Consequences of the Brexit on European Union Trademarks (EUTM), Registered Community Designs (RCD))

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The EU and the UK agreed on the principle of implementation of a Brexit transition period, which should end on December 31st, 2020.

A second version of the Draft Agreement has been in addition edited, which confirms the implementation of such a transition period and the negotiators’ consent on several provisions directly concerning Intellectual Property matters.

Such provisions were long-awaited especially since the EUIPO issued on last December an alarmist notice indicating notably that, unless any transitional arrangement concluded on or before the UK withdrawal date from EU, “EU rules on EU trademarks and Community designs (RCD) will no longer apply to the United Kingdom”. IP professionals and IP rights holders were therefore legitimate to wonder if specific measures would be taken to preserve the protection conferred by these EU rights in the UK.

Fortunately, IP provisions of this second Draft Agreement are not as alarmist as this EUIPO’s notice and give some responses. The main decisions can be summarized as follows:

*            Owners of an EU trademark or a Community design 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”.

*            A converted UK trademark or design shall have the same filing date and/or date of priority than the corresponding EU right.

*            The reputation acquired by an EU trademark at the date of the end of the transition period shall apply to the corresponding converted UK trademark. However, “thereafter the continuing reputation of that trademark shall be based on the use of the mark in the United Kingdom”.

*            A converted UK trademark shall not be liable to revocation on the ground that its corresponding EU trademark had not been put into genuine use in the UK before the end of the transition period.

*            A converted UK trademark or design shall have as its first renewal date the renewal date of the corresponding EU right.

*            Holders of an unregistered Community Design valid before the end of the transition period shall become the holder of an equivalent protection in the UK affording the same level of protection.

All the dispositions described above have been validated by negotiators of both sides, UK and EU, and shall now only be the subject of technical legal revisions in the coming weeks.

However, legal certainty on this Draft Agreement’s IP provisions will only come with the full and complete ratification of a definitive Withdrawal Agreement on both sides.

As the European Chief Negotiator for the Brexit Michel Barnier said: “Nothing is agreed until everything is agreed”.

We shall not fail to keep you informed about any further development.


Anaël DUVAL

IP Lawyer

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Soazig THEMOIN

Partner

French and European IP Attorney

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To those interested with more detailed information, and to be more specific:

i. Conversion of EU trademarks and Community designs:

Article 50, paragraph 1, provides that the holder of an EU trademark or a Community design 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”. The specification “withouth any re-examination” suggests that the UK Trademark Office (UKIPO) should not proceed to an examination of these new UK rights.

In addition, if an EU trademark application or a Community design application is still under registration proceedings at the end of the transition period, the applicant should have 9 months from the end of this period (namely until September 30th, 2021) to file the same trademark or design application within the UK (article 55, paragraph 1).

ii. Preservation of filing, priority and seniority dates:

Article 50, paragraph 5, point a, and paragraph 6, point b, provides that a converted UK trademark or design shall have the same filing date and/or date of priority than the corresponding EU right it arises from, and where appropriate, the same seniority date.

Likewise, Article 55, paragraph 1, specifies that this retroactivity shall as well apply to UK trademark and design applications arising from EU applications.

iii. Preservation of reputation

Article 50, paragraph 5, point c, provides that the reputation acquired by an EU trademark at the date of the end of the transition period shall apply to the corresponding converted UK trademark. It is however specified that “thereafter the continuing reputation of that trademark shall be based on the use of the mark in the United Kingdom”. The latter specification shall be clarified by negotiators or then through the practical application of the agreement, especially as regards the moment from which reputation of converted UK trademarks shall be based on the use in the UK only. Likewise, no indication is made as regards the fact that a reputation of an EU trademark in the UK only - and obtained prior to the end of the transition period - could “provide” a reputation to the EU trademark for the whole EU.

iv. Specifications regarding genuine use:

Article 50, paragraph 5, point b, provides that a converted UK trademark shall not be liable to revocation on the ground that its corresponding EU trademark had not been put into genuine use in the UK before the end of the transition period.

v. Conversion of invalidation and revocation decisions:

Article 50, paragraph 3, provides that if an EU trademark or a Community design is declared invalid or revoked as the result of an administrative or judicial procedure which was on-going on the last day of the transition period, the corresponding converted UK right shall also be declared invalid or revoked. The date of effect of the invalidation or revocation in the UK shall be the same as in the UE.

However, the UK shall not be obliged to declare invalid or revoke the converted UK right if the grounds for invalidity or revocation of the original EU right do not apply in the UK.

vi. Preservation of renewal date:

Article 50, paragraph 4, provides that a converted UK trademark or a converted UK design shall have as its first renewal date the renewal date of the corresponding EU right.

In addition, article 50, paragraph 6, point a, provides that the term of protection of a converted UK design shall be at least equivalent to the remaining period of protection of the corresponding EU design it arises from.

vii. Specifications regarding International registrations (Trademark & design) designating EU:

Article 52 provides that the UK “shall take measures” to insure that the holder of an EU designation of an International trademark or design obtained before the end of the transition period enjoys a protection in the UK in respect of this International registration.

viii. Specifications regarding unregistered Community designs:

Article 53 provides that the holder of an unregistered EU design valid before the end of the transition period shall become the holder of an equivalent protection in the UK affording the same level of protection. The term of protection of this new UK right shall be at least equal to the remaining period of protection of the corresponding unregistered EU design.

ix. Exhaustion of rights:

Article 57 provides that an EU trademark or Community design exhausted before the end of the transition period shall remain exhausted in the United Kingdom.

All the dispositions described above have been validated by negotiators of both sides, UK and EU, and shall now only be the subject of technical legal revisions in the coming weeks.

However, UK negotiators did not approved yet several other dispositions related to IP, especially the registration procedure of the converted UK rights detailed through Article 51 of the Draft Agreement.

This article provides cooperation between the European Commission, the EUIPO and the relevant IP entities in the UK, notably in order that:

  • IP entities in the UK may use data available in the registries of the EUIPO to perform registration of converted UK trademarks and designs;
  • registration of these converted UK trademarks and designs shall be carried out free of charge by IP entities in the UK;
  • holders of registered EU trademarks or Community designs shall not be required to introduce an application or to undertake any particular administrative procedure neither to have a correspondence address in the UK to obtain converted UK rights.  

These specific dispositions have been suggested by the EU and shall be the subject of further negotiations.

Although several of its IP provisions are still under negotiations, this second Draft Agreement gives significant guidance regarding further validity of EU trademarks and designs in the UK, after the Brexit.
However, legal certainty on this Draft Agreement’s IP provisions will only come with the full and complete ratification of a definitive Withdrawal Agreement on both sides.

Copy of the draft agreement may be find following the website link:

https://ec.europa.eu/commission/sites/beta-political/files/draft_agreement_coloured.pdf