EU trademarks and designs will continue to be valid in the UK post Brexit under the draft withdrawal agreement in a development that will be welcomed by rights owners.
Article 54 of the withdrawal agreement confirms that owners of EU trademarks, provided they have been registered or granted before the end of the 21-month transition period, will ‘without any re-examination, become the holder of a comparable registered and enforceable right in the UK’. IP practitioners had previously expressed concern that thousands of businesses and right owners could lose protection in the UK ‘overnight’ if an agreement was not reached.
Last week the Intellectual Property Office confirmed that it hoped such an agreement would be in place and that it was confident of meeting the administrative burden of transferring thousands of rights.
The agreement also clarifies that a person authorised to appear before the European Union Intellectual Property Office (EU IPO) and who is representing a party in a ‘procedure’ before the end of the transition period can continue to represent that party beyond the end of the transition. It does not clarify what is meant by ‘procedure’ but says the right shall apply to ‘all stages of the procedure’.
Kate O’Rourke, senior counsel at City firm Charles Russell Speechlys and immediate past-president of the Chartered Institute of Trade Mark Attorneys (CITMA) said rights owners will be reassured that the continued protection of registered EU trademarks has been reaffirmed.
However, she added that it is very disappointing that there is no clarity on continued rights of representation at the EUIPO despite the fact representation will be permitted for ongoing proceedings. '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.’
Carolyn Pepper, partner at international firm Reed Smith and chair of the Law Society’s IP Committee, said: ‘The draft agreement (if agreed) suggests largely business as usual regarding EU and community intellectual property rights registered up to the end of the transition period. What we don’t know yet is what will happen to rights filed after that so we will have to wait and see.
She said the proposal that an application for a separate UK right will need to be made within 9 months in respect of EU trade marks and community designs which are still at the application stage at the end of the transition period ‘could be read as an indication that we will see a separate UK right post transition’.
Pepper added: ‘The Law Society’s position is that the UK should remain within the European trade marks and designs system post transition given the likely costs to businesses of the alternative and so we hope that it still on the table.’
The same rules will apply for registered community designs, and geographical indications (GI), which protect food and drink associated with a particular country or region.
According to the agreement, where a GI, designation of origin or traditional speciality… is protected in the union on the last day of the transition period, the GI will be valid without any re-examination.
The position in the draft agreement is in line with that proposed by the European Commission in a position paper published last year. In that paper, the commission suggested that the UK legislate to recognise products currently protected by GIs in the EU. In the EU, Champagne, Cognac, Parmigiano Reggiano and Parma ham all have GI status as does UK export Scotch whisky.