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Revised draft withdrawal agreement: The UK and EU largely agree on the protection of IP rights post-Brexit

On 19 March 2018, the UK and EU Commission announced that they have broadly agreed on the provisions for the protection of IP rights after the Brexit transitional period has ended. A new draft withdrawal agreement has been published and a final agreement is expected in Autumn 2018.

Following on from our blog a few weeks ago on the European Commission's draft agreement governing the UK's withdrawal from the EU (which includes key provisions on the protection and enforcement of IP in the UK after the end of the transition period), yesterday the UK and EU Commission announced that they have agreed a 'large part' of that draft and a revised draft withdrawal agreement has now been published with various colour-coded text to highlight which provisions have and have not been agreed.

Any provisions highlighted in green in the draft agreement have been agreed at negotiators' level and "will only be subject to technical legal revisions in the coming weeks". The green text highlights that the following provisions have been agreed in principle:

  • There will be a transitional period from 29 March 2019 to 31 December 2020 during which time the UK will remain part of the EU (Article 121);
  • After the transition period, owners of EU trade mark registrations, Community designs and Community plant variety rights will "without any re-examination, become the holder of a comparable registered and enforceable right in the UK" (Article 50);
  • Those who have obtained protection for international registrations of trade marks or designs designating the EU before the end of the transition period shall continue to enjoy protection for those international trade marks and designs after the transition period (Article 52); 
  • Where an unregistered Community design has arisen before the end of the transition period, the UK will continue to benefit from a right with the 'same level of protection' as the UCD after the transition period (Article 53);
  • Where a database right has arisen before the end of the transition period, the UK will continue to benefit from a right with the 'same level of protection' as the EU database right  after the transition period (Article 54);
  • IP rights that have been exhausted in the UK and the EU before the end of the transition period shall remain exhausted both in the UK and the EU after the transition period (Article 57).

Text in white in the document corresponds to EU proposals that remain the subject of on-going discussions between the UK and the EU. The draft agreement indicates that the UK has yet to concede to the EU in relation to the following issues post-Brexit:

  • The protection of geographical indications and similar rights in the UK (Article 50(2));
  • The precise mechanics for the registration procedure in the UK (for EUTMs, RCDs and CPVs) (Article 51); and
  • Pending applications for supplementary protection certificates in the UK (Article 56).

So whilst progress is being made to ensure continued protection for EUTMs, Community designs, Community plant variety rights and database rights in the UK post-Brexit, some in the IP industry are concerned about the current lack of detail e.g. the exact mechanics of how the 'comparable' right will be created/transposed in practice with no charges and minimal administrative burden. Also, if an EUTM has not been put to genuine use in the UK before the end of the transition period, what additional period of time will the UK mark be allowed to prove genuine use, before it is liable for revocation? However, the good news is, there should be time to iron out these concerns and we have to hope that any final agreement will clarify these hazy points. Lobbying is likely to ramp up even more now to address those provisions needing clarification.

The UK Government has indicated that the UK and EU negotiating teams aim to finalise the entire withdrawal agreement by October 2018.

We will update you as when we hear any further information on the progress of the withdrawal agreement. 

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