BREXIT: Effect of the Transition Period on IPRs
During the transition period, the UK continues to be part of the EU insofar as the protection of EU intellectual property rights (IPRs) is concerned.
The effect of the provisions of the Withdrawal Agreement relating to trademarks, designs, and geographical indications is as follows.
- Owners of EU trademarks and published Community designs registered on transition expiry will automatically acquire a corresponding registered (and enforceable) UK right at no charge.
- Renewals, priority, and seniority: The above corresponding registered UK rights will be treated as having the same renewal dates and filing/priority dates as the registered EU rights from which they derive and, in the case of trademarks, where appropriate, they will have the UK seniority of the corresponding EU trademark.
- Use: a corresponding UK trademark will not be liable to revocation on the grounds that the EU trademark from which it derived had not been put into genuine use in the UK before the transition expiry.
- Reputation: Where an EU trademark has acquired a reputation in the EU by the transition expiry, the corresponding UK trademark can be enforced in the UK on the basis of that reputation. However, after the transition expiry, the continuing reputation of that UK trademark will be based on the use of the mark in the UK.
- Pending applications: Where an application for an EU trademark or Community registered design is pending on transition expiry, this will not be converted into a corresponding UK application. However, within nine months of the transition expiry date, the applicant may apply for registration of the same trademark or design, maintaining the priority of the corresponding application for an EU right. The Withdrawal Agreement does not expressly deal with a Community registered design where publication is deferred, but it is likely that this will be treated on the same basis.
- International Registrations: The UK will take measures to ensure that international trademarks and design registrations designating the EU and protected in the EU before the transition expiry will enjoy protection in the UK. It is expected that International Registrations will be dealt with on the same basis as EU trademarks and Community registered designs and applications for these.
- Correspondence address: Owners of corresponding UK trademarks and registered designs acquired under the Withdrawal Agreement will not be required to have a UK correspondence address in the three years following transition expiry. It is likely that they will be entitled to retain the correspondence address for the relevant EU trademark or Community registered design (even if this is not in the UK).
- Unregistered Community designs: Any unregistered Community design in existence on transition expiry will become an enforceable design right in the UK with the same level of protection, for at least the same remaining period of protection. The UK will introduce a new UK unregistered design right corresponding to the unregistered Community design, as provided in the UK IP Regulations.
- Geographical indications: Geographical indications, designations of origin, traditional specialities guaranteed, and traditional terms for wine, which are protected in the EU on transition expiry (excluding names whose EU protection is derived from international agreements) will thereafter be granted at least the same level of protection in the UK. However, where any such name ceases to be protected in the EU after the transition expiry, this name will cease to be protected in the UK.
- Representation: Where, before the transition expiry, any person is acting as a representative in a procedure brought before the European Union Intellectual Property Office (EUIPO), that representative may continue to represent that party in all stages of that procedure before the EUIPO. In every respect, these representatives will be treated as a professional representative authorized to represent a person before the EUIPO. This will also apply to UK-based representatives.
- Pending court proceedings: In the UK, as well as in EU member states in situations involving the UK, with respect to legal proceedings instituted before the transition expiry, the jurisdiction provisions of the EU Trademark Regulation and the Community Design Regulation will continue to apply, regardless of when those proceedings are finalized.
- Enforcement:in the UK, as well as in EU member states in situations involving the UK, with respect to legal proceedings instituted before the transition expiry, the provisions regarding jurisdiction of the Recast Brussels Regulation will continue to apply, regardless of when those proceedings are finalized.
- Pending cancellation proceedings: If, after transition expiry, a registered EU trademark or Community registered design is declared invalid or revoked, as the result of proceedings ongoing at transition expiry, the corresponding UK trademark or Community registered design will also be declared invalid or revoked, unless the grounds for invalidity or revocation do not apply in the UK, in which event the UK will not be obliged to declare invalid or revoke the corresponding UK right.
- Exhaustion: IPRs which were exhausted both in the EU and in the UK before the transition expiry under the conditions provided for by EU law will remain exhausted both in the EU and in the UK. Where goods were put on the market in the European Economic Area or the UK prior to the transition expiry by the rights holder or with its consent, the relevant rights will remain exhausted in either territory.
Source: International Trademark Association (excerpt)