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Brexit transition period: intellectual property

The UK-EU Withdrawal Agreement (WA) came into effect on 31 January 2020 having been implemented in UK law through the EU (Withdrawal Agreement) Act.

Part 3, Title IV (Articles 54 to 61) of the WA contain the provisions on intellectual property (IP) protections and enforcement, while Article 97 concerns the EU Intellectual Property Office (EU IPO).

IP rights

The WA provides for automatic recognition in UK law of existing EU IP rights.

The holders of EU trade marks, Community designs and Community plant variety rights are granted comparable UK rights.

The WA also provides for the continued protected use of:

  • geographical indications
  • designations of origin
  • traditional specialities

where the protections are currently guaranteed under EU law (Art 54). This applies to EU rights granted until the end of the transitional period.

Registration

The registration of the newly-created UK IP rights will happen automatically and free of charge by the UK IPO, in conjunction with the EU IPO and other bodies.

There is no need for holders of the rights to submit an application (Art 55).

Administrative requirements

There is no need for a UK correspondence address for three years beyond the end of the transitional period.

The date of filing for newly created UK IP rights is the date of the comparable EU right, and renewal dates are synced.

If an existing IP right is declared null or invalidated in proceedings which have at least commenced before the end of the transitional period, it will automatically be declared null and void in the UK, unless the grounds for invalidation are not valid in the UK.

Wider IP-related protections

Protections granted under EU law for internationally registered trade marks or designs will be protected in the UK, to the same level as before (Art 56).

Article 58 states that holders of IP rights with regards to UK databases will have their rights automatically protected in UK law to the same standard as under existing EU law (Art 11 of Directive 96/9/EC).

In addition to registered rights, the WA also obliges the UK to grant protections under UK law for the holder of an unregistered Community design right which has come to light before the end of the transitional period (Art 57).

Pending applications

The WA also includes provisions which deal with the issue of registration applications which are pending at the end of the transitional period (Article 59).

Where a person has applied to register an EU trade mark or community design during the transitional period and the matter is pending, the person shall have nine months to apply for corresponding UK registration where the UK will recognise the original EU filing date.

The same applies for community plant variety rights, though the deadline is six months.

Conversely, IP rights that expire during the transitional period shall be terminated in both UK and EU jurisdictions (Art 61).

EU Intellectual Property Office

Lawyers who are representing parties in proceedings that are ongoing before the EU IPO at the end of the transitional period will be entitled to continue representing them for that procedure, without any diminution in rights or treatment (Art 97).

This applies to all stages of proceedings.

Contact us

For more information, contact:

Marcus Corry
EU internal market adviser
UK Law Societies Joint Brussels Office, Avenue des Nerviens 85, B-1040 Brussels, Belgium

Call: +32 (0)2 743 85 85
Mobile: +44 (0)7976 182202
Website: www.lawsocieties.eu

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