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BREXIT - The Current Position relating to IP Rights

EU Trade Marks and EU Designs

EU unitary registered trade marks (EUTM) and registered designs (RCD) currently cover the 28 EU countries (“EU28”). On the withdrawal of the UK from the European Union (which will be at the end of the transition period on 31 December 2020 if the UK and EU reach agreement), existing EU28 rights will automatically be “cloned” into UK national rights, resulting in rights covering the UK and EU27 after the UK’s withdrawal. The UK Government has confirmed that cloning will occur automatically and will be free of charge.

The proprietor can decide at the next renewal whether to renew the UK cloned registration, the EU27 registration or both. However, a system for “opting out” of a “cloned” UK registration has been proposed in a “no deal” scenario (see below), although it is not clear if this will also apply if the UK and EU reach agreement. Also, the mechanism for opting out is not yet clear.

EU28 applications which are still pending on withdrawal day will not be cloned. However, applicants can refile in the UK if they wish, and provided this is done within nine months of the UK’s withdrawal, the EU filing/priority date will be retained.

After the UK’s withdrawal, it will be necessary to file separately in the UK as well as the EU.

The Chartered Institute of Patent Attorneys (CIPA) recently began lobbying the UK Government to explore with the EU ways in which the UK can continue to participate in the EU trade marks and designs systems when the UK leaves the EU.

Patents

There is no impact of BREXIT on UK national or traditional European (EP) patents or patent applications. The European patent system is a non-EU organisation containing 38 member states, with 10 being non-EU states.

The Unitary Patent and the Unified Patent Court

The UK ratified the Unified Patent Court Agreement on 26 April 2018. Germany has still to ratify, but as has been widely reported, there has been a delay due to a constitutional challenge. The system is therefore not yet in operation.

In its White Paper of 12 July 2018, the UK Government stated:

“The UK has ratified the Unified Patent Court Agreement and intends to explore staying in the Court and unitary patent system after the UK leaves the EU. The Unified Patent Court has a unique structure as an international court that is a dispute forum for the EU’s unitary patent and for European patents, both of which will be administered by the European Patent Office. The UK will therefore work with other contracting states to make sure the Unified Patent Court Agreement can continue on a firm legal basis.”

Supplementary Protection Certificates

SPCs are national rights based on EU legislation. The UK Government has said it will enact any necessary new legislation to provide a legal basis for existing and new SPC cases under UK national law.

“No Deal” Scenario

The UK Government recently issued some guidance notes on the impact of a “no deal” scenario on IP rights, if the UK and EU fail to reach agreement on their future relationship (links are provided at the bottom of this article). If no deal is reached, the UK will leave the EU on 29 March 2019.

The proposed provisions for EU trade marks and EU registered designs are essentially the same as described above in relation to the “deal” scenario, other than of course the shorter timescale for putting the necessary systems in place at the UKIPO. EU registrations will be “cloned” and EU pending applications can be refiled within 9 months. It is understood that it will be possible for proprietors of “cloned” UK registrations to opt out, although they can also decide not to renew.

The positions regarding the Unitary Patent, the Unified Patent Court and SPCs are the same as for the “deal” scenario.

Useful Links

EU Draft Withdrawal Agreement – 19 March 2018

UK White Paper – 12 July 2018

UKIPO Summary – regularly updated

UK “No Deal” Guidance – Trade Marks and Designs – 24 September 2018

UK “No Deal” Guidance – Patents – 24 September 2018