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BREXIT : A SIGNIFICANT, BUT PARTIAL, STEP FORWARD FOR EUROPEAN INTELLECTUAL PROPERTY RIGHTS
Discussion between European authorities and the UK on the future of intellectual property rights once Brexit becomes effective have moved forward, and the alarmist communication of the European Commission on December 1st, 2017, countersigned by the EUIPO, has to be reconsidered today in the light of the Agreement proposed by the European Commission to the UK and published on February 28, 2018 (European Commission Draft Withdrawal Agreement – TF50 (2018) – Commission to EU 27 – 28 February 2018).
In this Agreement, articles 50 to 57 of Title IV relate to Intellectual Property rights, and some of these articles have already been accepted by the UK.
However, some important points remain under discussion. They are related to the procedure which will apply for maintaining rights and, notably, if the continuity planned for certain rights will be free of official fees.
Nevertheless, it emerges from this agreement that the UK will remain subject to European rules and to the CJEU during a transition period from the date of the UK exit from the European Union, on March 30, 2019, to a date planned in the Agreement namely December 31, 2020 (article 121).
1/ Continuity of rights is ensured for European trademarks, European designs as well as for registered plant variety rights under the conditions set out below.
Applying article 50 of the Agreement of March 19, 2018, the UK undertakes to acknowledge without new examination, trademarks and designs rights as long as they were registered before the end of the transition period, at the latest on December 31, 2020. Identity of the sign and the designated goods and/or services will be required, as well as identity of the registered design (or design that has been subject to deferred publication) in order to obtain continuity of the same rights in the UK (Article 50.1).
Similarly, all decisions in administrative or judicial proceedings in progress on December 31, 2020, ruling on invalidity, cancellation or removal from the register of an European IP right will have effect in the UK, irrespective of whether the decision is dated after December 31, 2020, as long as the action has been introduced before this date. The decision will take effect both in British and European territory. Nonetheless, the UK reserves the right not to give effect to a decision if the grounds motivating it are not applicable under British law (article 50.3).
It is specified that renewal dates in the UK will be the due dates under European law (article 50.4). European Union trademark owners are assured of the maintenance of the filing and priority date, as well as of the benefit of a trademark’s claimed seniority within UK territory (article 50.5a). Cancellation of a trademark on the ground of non-use will not be able to be requested in the UK against a former European Union trademark that has been unused in the UK prior to December 31, 2020 (article 50.5b). Rights for well-known trademarks will be maintained, to be evaluated according to British law once the transition period is over (article 50.5c).
Owners of designs and plant varieties will also benefit from the filing or priority date which would have been claimed, as well as a protection period equivalent to that provided by European law.
2/ The continuity of protection for trademarks and designs obtained through international conventions is ensured.
This concerns international trademarks obtained through the Madrid system and designs obtained through the Hague system before December 31, 2020.
3/ The continuity of protection is ensured for databases under certain conditions, and for unregistered designs (article 54).
The UK acknowledges the « sui generis » rights attached to databases in accordance with article 7 of the Directive 96/9, which are created before the end of the transition period, and ensures the same level of protection as that provided by this text, limiting however the beneficiaries to : (i) nationals (ii) individuals having their habitual residence in the UK (iii) companies established in the UK. For those having only their head office in the territory, their activities have to be actually linked with the British economy.
The protection period attached to databases must be at least equal to the remaining period of protection provided by article 10 of the Directive.
The owner of an unregistered design which is disclosed before the end of the transition period will benefit from a protection equivalent to that provided by the European text for the remaining duration of protection.
4/ Applicants for trademarks, designs and plant varieties will benefit from an increased priority period (article 55).
Indeed, article 55 of the Agreement provides that a person who has filed a European trademark application or a European design application and has obtained a filing date before December 31, 2020 will benefit from 9 months from this date to claim priority.
The time period is 6 months for plant varieties.
5/ It is understood that these provisions have a transitional nature, in the sense that as from January 1st, 2021 all the rights which have benefited will no longer be governed by European law, but by the applicable UK national law.
6/ Finally, Intellectual Property rights which have been exhausted according to European Regulations, before the end of the transitional period, will remain so.
7/The European Commission and the UK have not yet reached agreement on continuity of rights for:
8/ Questions still remain regarding the implementation of this continuity by the competent UK authorities, and its potential cost.
The European Commission has proposed that no specific filing procedure should be required and that this continuity should not entail payment of fees, without prejudice to renewal fees or applicant’s renunciation.
9/ Copyright, including related rights, is subject to a separate note published on March 28, 2018 by the European Commission.
It can be seen from this note that no transitional period is provided. This note specifies that after March 30, 2019 copyright will be ensured by international conventions to which the UK is party or member, notably the TRIPS agreement which has provisions governing the object of copyright (including software, databases and semi-conductor products), authors’ rights (moral and patrimonial rights), exploitation of rights and the means of enforcement.
This note also mentions that no transition period is planned for « sui generis » rights related to databases. On this point, the note is in contradiction with the Agreement published on February 28, 2018.
Finally, Title I, article 3 of the Agreement, states that the territorial extent to which it applies is the following :