EU Publishes Draft Brexit Agreement

On 28 February 2018 the EU published its first draft of an agreement governing the UK’s withdrawal from the European Union. This is the first time that issues surrounding Intellectual Property have been addressed in detail and will come as a relief to many anxious to know what the landscape might look like post Brexit.

It is important to note that this agreement sets out the position of the European Commission but has not been agreed by the UK so there are likely to be changes along the way, however, this at least gives a clear indication as to how the European Commission would like IP provisions to operate when the UK sits outside the Union.

The agreement sets out a transitional period from 30 March 2019 to 31 December 2020. This would allow the UK government time to implement the many changes that Brexit will require and will mean the ‘true’ Brexit would not happen until the beginning of 2021.

The Commission is clearly wanting to protect the position of all EU right holders and ensure that there is no loss of rights. It is hard to see how there will be any dispute over the intent, but there may be disagreements on the mechanisms put in place to make this happen.

The key IP provisions are set out in Articles 50-57 of the draft agreement and can be summarised as follows:

Trade Marks

  • Holders of EU registered trade marks shall be granted an equivalent UK registration covering the same mark and the same goods and/or services with no cost and no examination
  • Any priority, application or seniority dates will be replicated in the new UK right
  • The owner of an EU trade mark that enjoys a reputation in the EU shall have the right to rely on that reputation (for Article 9(2)(c) of the EU Trade Mark Regulation) in respect of their corresponding UK right
  • New UK rights will not be liable to revocation for non-use, on the grounds that the corresponding EU right had not been put to use in the UK.
  • The owners of pending EU applications, at the date of transition, shall have the right to apply for protection in the UK and retain the date of the EU application for a period of 6 months after the transition date
  • Renewal dates of any new UK rights will mirror those of the corresponding EU right
  • The UK shall ensure that protection is provided for all International trade mark and design registrations under the Madrid system that designate the European Union

Designs

  • Holders of Community registered designs shall be granted an equivalent UK registration providing the same date and scope of protection with no cost and no examination
  • The date of filing of the UK right shall mirror that of the EU right
  • Renewal dates of any new UK rights will mirror those of the corresponding EU right
  • Holders of EU unregistered design right that arose before the end of the transition period shall enjoy equivalent protection in the UK for the remaining duration of the EU unregistered design right

Plant Variety Rights (PVR)

  • Holders of EU PVRs shall be granted an equivalent UK right for the same plant variety
  • The period of protection of the UK right shall not be shorter than that provided by the EU right
  • The date of filing of the UK right shall mirror that of the EU right
  • The owners of pending EU applications, at the date of transition, shall have the right to apply for protection in the UK and retain the date of the EU application for a period of 6 months after the transition date

Databases

  • The UK shall provide equivalent protection for those holding UK rights in databases under Article 7 of Directive 96/9/EC

Exhaustion

  • Any intellectual property right exhausted in the EU and the UK prior to the end of the transition period shall remain exhausted in both the UK and EU

Generally, the provisions set out are favourable to right holders, however, there are a few key areas that will need to be addressed in much more detail.

There is no mention of how exhaustion of rights will be dealt with after the UK leaves the EU. These provisions only deal with those rights already exhausted. It is a case of ‘watch this space’ on exhaustion which is likely to be influenced by more general provisions on the movement of goods.

The provisions also put the cost of the transfer and creation of new rights onto the UK government which will no doubt be a significant negotiating point.

No further information is given regarding the proposed EU Unitary Patent or the Unified Patents Court.  Although the UK has ratified the proposals and commenced the establishment of the London branch of the Unified Patents Court, there is at present still uncertainty regarding how or even if the UK will operate within the scheme following Brexit.  There is no mention in the draft agreement of patent rights under the auspices of the European Patent Office, which is not an EU institution

This is a summary of the main points and if you have any specific concerns please feel free to get in touch to discuss your individual needs.