The European Union (EU) and the United Kingdom (UK) have reached a draft agreement about the UK leaving the EU (commonly referred to as Brexit). This will affect Intellectual Property (IP) rights such as trade marks, registered designs (referred to as design patents in China) and plant variety rights that have been filed in the EU but which have effect in the UK. Patents are not directly affected as the European Patent Office is not a EU organization.

The draft Brexit Agreement takes what seems to be a pragmatic approach to issues that will arise for rights holders affected by the Brexit process. There will be a transition or implementation period, which will start on the date the Brexit Agreement comes into force and will end on 31 December 2020. This period is important as many of the provisions protecting rights holders are dependent on when the period ends. For example, rights holders will not be required to have a correspondence address in the UK in the 3 years following the end of the transition period (31 December 2020).

If you have any questions about your rights in the UK following Brexit please contact August Zhang (azhang@lushenglawyers.com) or Hatty Cui (hcui@rouse.com).

The main points for IP owners are as follows:

Trade marks

The holder of an existing registered EU trade mark will become the holder of a registered trade mark in the UK. This will occur without any re-examination.

If a registered EU trade mark is declared invalid or is revoked following an administrative or judicial procedure which was ongoing at the end of the transition period, the corresponding registered UK trade mark will also be declared invalid or revoked. However, if the reason for declaring the EU trade mark invalid or revoked does not apply in the UK, there is no obligation on the UK to also invalidate or revoke the UK trade mark.

A UK trade mark will not be revoked because the corresponding EU trade mark has not been put into genuine use in the UK before the end of the transition period.

The owner of a EU trade mark that has acquired a reputation in the EU by the end of the transition period will be entitled to equivalent UK rights. After the transition period reputation in the UK will be based on the use of the trade mark in the UK.

Anyone who has obtained an EU trade mark under the Madrid system before the end of the transition period will have protection in the UK for those international registrations.

If you have filed an EU trade mark application before the end of the transition period, you will have 9 months from the end of the transition period to file an equivalent trade mark application in the UK.  The UK application will have the same filing date and date of priority as the corresponding application in Europe.

Industrial Designs

The holder of an existing registered Community design will become the holder of a registered UK design. This will occur without any re-examination.

If a registered Community design is declared invalid or is revoked following an administrative or judicial procedure which was ongoing at the end of the transition period, the corresponding registered design in the UK will also be declared invalid or revoked. However, if the reason for declaring the Community design invalid or revoked does not apply in the UK, there is no obligation on the UK to invalidate or revoke the registered design.

The term of protection of registered design rights in the UK will be at least equal to the remaining period of protection under EU law.

Anyone who has obtained protection in the EU for designs under the Hague system before the end of the transition period, will have protection in the UK for those international registrations.

If you have filed an application for a Community design before the end of the transition period, you will have 9 months to file a UK application for an equivalent registered design from the end of the transition period.  The UK application will have the same filing date and date of priority as the corresponding application in Europe.

Plant Variety Rights

The holder of an existing granted Community plant variety right will become the holder of a UK plant variety right. This will occur without any re-examination.

If a Community plant variety right is declared null and void or is cancelled following an administrative or judicial procedure which was ongoing on the last day of the transition period, the corresponding UK plant variety right will also be declared null and void, or be cancelled. However, if the reason for declaring the Community plant variety right null and void or cancelled does not apply in the UK, there is no obligation on the UK to invalidate or revoke the right.

The term of protection of a UK plant variety right will be at least equal to the remaining period of protection for the equivalent EU plant variety right.

If you have filed an application for a Community plant variety right before the end of the transition period, you will have a right of priority in the UK during a period of 6 months from the end of the transition period.  This will mean the priority date of the Community plant variety right is the application date for the UK plant variety right for the purpose of determining distinctness, novelty and entitlement to the right.

Other Intellectual Property Rights

If you are a holder of EU Geographical Indications (GIs) or Unregistered Community Designs, you will be given an equivalent UK right.

If you have a pending EU Supplementary Protection Certificate (SPC) application at the end of the transition period, an equivalent SPC can be granted in the UK.