15 Nov
2018

“No clarity on continued rights of representation”: trademark experts have their say on the draft Brexit withdrawal text

  • EU and UK agree on BREXIT draft withdrawal text; dedicated IP chapter included
  • Cost-free cloning of registered EUTM and RCD rights confirmed
  • Concern expressed over long-term UK attorney rights of representation

This week the European Commission and the United Kingdom's negotiators reached agreement on the Withdrawal Agreement of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community. The document establishes the terms of the UK's withdrawal from the EU, and has led to political infighting in the UK. The day after publication and a lengthy cabinet session that resulted in its approval, the UK government has been hit by a number of resignations and faces a battle to get the Brexit deal through Parliament. However, while uncertainty over the future of the deal remains, the 585 page document provides crucial insight into the planned treatment of intellectual property – including rights of representation, exhaustion and the cost-free cloning of rights.

The agreement states that:

  • The holders of a registered EU trademark or Community registered design (RCD) will, at the end of the transition period and without examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom. This will be free of charge.
  • Where a geographical indication, designation of origin, traditional speciality or traditional term for wine, is protected in the EU on the last day of the transition period, those who are entitled to use the right will be entitled to it in the United Kingdom, with the same level of protection under the law.
  • The UK will take measures to ensure that natural or legal persons who have obtained protection before the end of the transition period for internationally registered trademarks via Madrid, or designs via the Hague system, enjoy protection in the UK for these marks or industrial designs.
  • The holders of an unregistered Community design which arose before the end of the transition period will become the holder of an enforceable right in the United Kingdom. The term or protection being at least equal to the remaining period of protection of the corresponding unregistered Community design.
  • Where a person has filed an application for a EUTM or RCD before the end of the transition period and where that application was accorded a date of filing, that person will have  he right to file an application in the UK within nine months from the end of the transition period – such applications deemed to have the same filing date and date of priority as the corresponding EU application.
  • Intellectual property rights which were exhausted both in the EU and the UK before the end of the transition period under the conditions provided for by EU law will remain exhausted both in the EU and in the UK.
  • With respect representation before the EUIPO, where a natural or legal person was representing a party in a procedure brought before the office before the end of the transition period, they may continue to do so in that procedure.

Having had an opportunity to digest the text, a number of leading trademark professionals have provided reaction to, and overviews of, the text and its implications. These are presented below:

 

It is very disappointing that there is no clarity on rights of representation

Businesses and IP rights holders will be reassured that the continued protection of registered EU trademarks and registered community designs in the UK has been reaffirmed in the draft withdrawal agreement. We are encouraged that rights of representation at the EUIPO will continue for ongoing proceedings. This ensures some continuity and is a step in the right direction. 

However, it is very disappointing that there is no clarity on continued rights of representation for UK Chartered Trademark Attorneys before the EUIPO. We firmly believe that it is in the best interests of business and the UK legal professions that UK professional representatives should retain their rights to practice before the EUIPO

Kate O’Rourke, immediate past-president of The Chartered Institute of Trademark Attorneys

 

The provisions on the exhaustion of IP rights are relatively sparse

There is a surprisingly large amount of comment on intellectual property rights in the draft withdrawal agreement, and it does put some added ‘meat’ on the bare bones we have had to date on some of the procedures for ‘cloning’ both registered design and trademark rights and how ongoing invalidity and revocation proceedings will be dealt with respect existing EU rights post the end of the transition period.

The draft withdrawal agreement is clear that at the end of the transition period existing EU registered design and trademark rights will be cloned free of charge and automatically into UK registered rights. This was to a degree known already, but it is good to see such provisions in the draft withdrawal agreement itself. Although the draft agreement provides for the previously declared nine month period for the cloning of pending EU design and trademark applications into UK rights on transition, I cannot see any obvious provisions on whether there will be any cost for the cloning of pending rights at the end of transition period.

On ongoing revocation and invalidity proceedings before the EUIPO with respect to registered EU trademark rights at the date of transition, it appears that the EUIPO will continue to manage those post the end of the transition and there will not be parallel proceedings against the cloned UK registered post transition. However, the cloned UK right will be dependent to a degree on the outcome of those proceedings post transition. As if an EU registered right is cancelled post transition, it appears the cloned UK registered will also be cancelled, and from the date of revocation or cancellation in the EU, although only if the basis of cancellation or revocation applied to the UK also. This is a simple and elegant provision, but does raise the possibility of the EUIPO deciding on cancellation actions against EU registered trademarks based on UK rights post transition.

On non-use and registered trademark rights, it appears that the five year non-use period with regards cloned UK trademark rights will start from the date of transition, if I have read the provisions on that correctly in the draft agreement. The fact an EU registered trademark has not been used in the UK in a five year period prior to the date of transition appears not to be a valid basis of revoking a cloned UK registered right.

The provisions on the exhaustion of IP rights are relatively sparse. However, it is clear if an IP right is exhausted in the Union prior to the end of the transition period, it will be exhausted in the UK post transition. The UK government had already made clear it will follow a hybrid UK/EEA exhaustion of rights system post transition, but has made it clear that structure could be temporary and is going to be open to consultation. This could herald international exhaustion of rights in the UK post transition, we will have to wait and see.”

Lee Curtis. partner and chartered trademark Attorney at HGF

 

This certainly won’t be a straightforward process

In order for the withdrawal agreement to come into force, it will need to be approved by the EU Council, the UK Parliament and the EU Parliament. This certainly won’t be a straightforward process, and it is possible that further amendments will be made to the draft agreement if issues arise during the approval process.

The IP implications remain much the same as the previous version published in March. The agreement provides a transition period until the end of 2020, during which period the UK will remain within the EU systems. Holders of EU Trademarks, Registered Community Designs and Community Plant Variety Rights at the end of the transition period will be given a fully equivalent UK right at no official cost. If the EU right is subsequently revoked due to a procedure which is pending at the end of the transition period then the equivalent UK right will also be revoked, as long as the grounds for revocation apply in the UK. A UK address for service will not be required for the equivalent UK right for at least three years after the end of the transition period, a minor change to the previous version.

Holders of EU Geographical Indications will be given an equivalent UK right, and holders of Unregistered Community Designs will become the holder for an equivalent unregistered right in the UK.

Applicants for EU Trademarks, RCDs and Community Plant Variety Rights that are pending at the end of the transition period will have 9 months to reapply for the equivalent UK rights. Meanwhile pending applications for Supplementary Protection Certificates, which are based on an EU regulation, will continue, and can be granted after the end of the transition period.

The UK must take steps to ensure continued protection of International Trade Mark and International Design registrations that cover the EU.

IP rights that were exhausted in the UK and EU before the end of the transition period will remain exhausted in both jurisdictions. These can be read alongside the UK Government’s plans for the IP system in the event of a no-deal, as these have been designed to be transferrable to a situation where the anticipated withdrawal agreement was finalised.”

Robert Watson, partner at Mewburn Ellis

Trevor Little

Editor

[email protected]