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31 January 2020
Published on 19 March 2018, the legal text of the draft Withdrawal Agreement sets out the terms upon which UK and EU negotiators have reached a settlement, subject to minor technical legal revisions. In particular, the text provides some clarity on the extended protection of European Union trade mark registrations (EUTMs) (including International Registrations designating the EU), Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) which will take effect from “the end of the transitional period” (hereby referred to as the commencement date).
The draft Agreement refers to a “transition or implementation period” during which EU law will continue to apply in the UK. This means that EUTMs, RCDs and UCDs will continue to be recognised and enforced in the UK. The Commission stipulates that the transition period will commence on the date of entry into force of the Agreement and is due to end on 31 December 2020. After this date, all EUTMs and RCDs will automatically have, “without any re-examination” an equivalent “registered and enforceable intellectual property right in the United Kingdom”. The owners of UCDs will also own a comparable UK Unregistered Design for the remainder of the three-year period of protection from the commencement of the UCD.
Filing, Priority, Seniority and Renewal Dates
The automatic transferral of EU rights to UK rights means that filing, priority, seniority and renewal dates of the relevant EU right will be transposed to the corresponding UK right. With regard to priority rights for pending EUTM applications at the Commencement Date, a period of nine months will be allowed for the owner to file a UK application, which will retain the original priority date of the EUTM.
Revocation Actions for Non-Use
Additionally, the Withdrawal Agreement confirms that UK trade mark registrations (UKTMs) cannot be declared invalid or revoked for non-use by virtue of a lack of use in the UK prior to the Commencement Date. This means that where demonstrating use elsewhere in the EU is sufficient to maintain the registration of an EUTM, the same will also apply for the equivalent UKTM.
Pending Cancellation Actions
However, where there is a pending cancellation action at the Commencement Date, the outcome of the proceedings will affect the equivalent UK right, save in circumstances under which the grounds for cancellation are not enforceable in the UK. For example, an application for invalidity based on an earlier national right would not be admissible because earlier national rights have no effect in the UK.
The owners of new UKTMs are able to rely on reputation acquired in the EU prior to the Commencement Date to enforce their rights in the UK. However, the Agreement also dictates that “thereafter the continuing reputation of that trade mark shall be based on the use of the mark in the United Kingdom”, which means that solely reputation in the UK will be taken into account after the Commencement Date.
It is welcome news that the European Commission has provided greater clarity in these areas but there still remains a lot left unsaid and to be agreed upon, among which the cost and administration associated with the transposition process is subject to ongoing discussions. Furthermore, it is not yet known whether the UK government will be happy with the proposals regarding these new UK intellectual property rights. After all, the legal text is still in draft form and the terms must be approved by each EU Member State.
Trade Mark group
If you require further information on anything covered in this briefing, please contact Fiona McBride (firstname.lastname@example.org; 44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, January 2020