On 28.02.2018 was published the Draft Withdrawal Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community.
Thе Draft Withdrawal Agreement sets out the arrangements for the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and from the European Atomic Energy Community.
It will now be discussed over the coming weeks with the Council (Article 50) and the Brexit Steering Group of the European Parliament before transmission to the UK authorities for negotiation.
The EU Commission included a dedicated Title IV (Articles 50‒57), which covers “intellectual property.” Trademarks, designs, geographical indications, databases, and even plant variety rights are addressed. The main principle put forward by the Commission in this IP title is “continued protection in the United Kingdom of registered or granted rights.” This draft will serve as a basis for the negotiations for the EU and will have to be addressed by the UK negotiators in order to agree on a final common text.
The texts provide that:
TITLE IV INTELLECTUAL PROPERTY
Article 50
Continued protection in the United Kingdom of registered or granted rights
1. The holder of any of the following intellectual property rights which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom:
(a) the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council26 shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;
(b) the holder of a Community design registered in accordance with Council Regulation (EC) No 6/200227 shall become the holder of a registered design right in the United Kingdom for the same design;
(c) the holder of a Community plant variety right granted pursuant to Council Regulation (EC) No 2100/9428 shall become the holder of a plant variety right in the United Kingdom for the same plant variety.
2.Where a geographical indication, designation of origin or traditional speciality guaranteed within the meaning of Regulation (EU) No 1151/2012 of the European Parliament and of the Council29, a geographical indication, designation of origin or traditional term for wine within the meaning of Regulation (EU) No 1308/2013 of the European Parliament and of the Council30, a geographical indication within the meaning of Regulation (EC) No 110/2008 of the European Parliament and of the Council31 or within the meaning of Regulation (EU) No 251/2014 of the European Parliament and of the Council32, is protected in the Union on the last day of the transition period, those entitled to use the geographical indication, the designation of origin, the traditional speciality guaranteed or the traditional term concerned shall, as from the end of the transition period, be entitled to use a right in the United Kingdom granted under the law of the United Kingdom which provides for at least the same level of protection, with respect to the geographical indication, the designation of origin, the traditional speciality guaranteed or the traditional term concerned, as the protection provided for by the following provisions of Union law:
(a) Article 4(1)(i) of Directive (EU) 2015/2436 of the European Parliament and of the Council33; and
(b) as appropriate in view of the right concerned, Articles 13, 14(1), 24, 38, 44 and 45(1)(b) of Regulation (EU) No 1151/2012; Articles 102(1), 103, 113 and 157(1)(c)(x) of Regulation (EU) No 1308/2013; Articles 16, 23(1) and, in so far as related to compliance with Articles 16 and 23(1), Article 24(1) of Regulation (EC) No 110/2008; or Articles 19(1) and 20 of Regulation (EU) No 251/2014.
iii.Notwithstanding paragraphs 1 and 2, if an intellectual property right referred to in those paragraphs is declared invalid or revoked, or in the case of a Community plant variety right is declared null and void or cancelled, in the Union as the result of an administrative or judicial procedure which was ongoing on the last day of the transition period, the corresponding right in the United Kingdom shall also be declared invalid or revoked, or declared null and void, or cancelled.
iv.A trade mark or registered design right which arises in the United Kingdom in accordance with points (a) and (b) of paragraph 1 shall have as its first renewal date the renewal date of the corresponding intellectual property right registered in accordance with Union law.
v.In respect of trade marks in the United Kingdom referred to in point (a) of paragraph 1 of this Article, the following shall apply:
(a) the trade mark shall enjoy the date of filing or the date of priority of the European Union trade mark and, where appropriate, the seniority of a trade mark of the United Kingdom claimed under Article 39 or 40 of Regulation (EU) 2017/1001;
(b) the trade mark shall not be liable to revocation on the ground that the corresponding European Union trade mark had not been put into genuine use in the territory of the United Kingdom before the end of the transition period;
(c) the owner of a European Union trade mark having a reputation in the Union shall be allowed to exercise in the United Kingdom rights equivalent to those provided for in point (c) of Article 9(2) of Regulation (EU) 2017/1001 and point (a) of Article 5(3) of Directive 2015/2436 in respect of the corresponding trade mark on the basis of the reputation acquired in the Union.
vi.In respect of registered design rights and plant variety rights in the United Kingdom referred to in points (b) and (c) of paragraph 1, the following shall apply:
(a) the term of protection under the law of the United Kingdom shall be at least equal to the remaining period of protection under Union law of the corresponding registered Community design or Community plant variety right;
(b) the date of filing or the date of priority shall be that of the corresponding registered Community design or Community plant variety right.
Article 51 Registration procedure
i.The registration or grant of the intellectual property rights pursuant to Article 50(1) and (2) of this Agreement shall be carried out free of charge by the relevant entities in the United Kingdom, using the data available in the registries of the European Union Intellectual Property Office, the Community Plant Variety Office and the European Commission. Annex III to Regulation (EC) No 110/2008 shall be considered a registry for the purpose of this Article.
ii.For the purpose of the registration process, holders of the intellectual property rights referred to in Article 50(1) and those entitled to use the rights referred to in Article 50(2) shall not be required to introduce an application or to undertake any particular administrative procedure. They shall not be required to have a correspondence address in the United Kingdom, without prejudice to such address being required at the moment of the first renewal of the intellectual property right concerned, where applicable.
iii.The European Union Intellectual Property Office, the Community Plant Variety Office and the European Commission shall provide to the relevant entities in the United Kingdom the information necessary for the registration or grant in the United Kingdom of the intellectual property rights referred to in Article 50(1) or (2).
iv.This Article shall be without prejudice to renewal fees that may apply at the time of renewal of the rights, or the possibility for the holders concerned to surrender their intellectual property rights in the United Kingdom, in accordance with the relevant procedure under the law of the United Kingdom.
Article 52
Continued protection in the United Kingdom of international registrations designating the Union
The United Kingdom shall ensure that natural or legal persons who have designated the Union in respect of international registrations of trade marks or designs pursuant to the Madrid system for the international registration of marks or the Hague system for the international deposit of industrial designs before the end of the transition period, enjoy protection in the United Kingdom for their trade marks or industrial designs in respect of those international registrations.
Article 53 Continued protection in the United Kingdom of unregistered Community designs
The holder of a right in relation to an unregistered Community design which arose before the end of the transition period in accordance with Regulation (EC) No 6/2002 shall in relation to that unregistered Community design ipso iure become the holder of an enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom and affording the same level of protection as that provided for in Regulation (EC) No 6/2002. The term of protection of that right under the law of the United Kingdom shall be at least equal to the remaining period of protection referred to in Article 11(1) of that Regulation of the corresponding unregistered Community design.
Article 54 Continued protection of databases
i.The holder of a right in relation to a database in respect of the United Kingdom in accordance with Article 7 of Directive 96/9/EC of the European Parliament and of the Council34 which arose before the end of the transition period shall in relation to that database maintain an enforceable intellectual property right in respect of the United Kingdom as provided for by the law of the United Kingdom and affording the same level of protection as that provided for in Directive 96/9/EC, provided that the holder of that right continues to comply with the requirements of Article 11 of that Directive. The term of protection of that right under the law of the United Kingdom shall be at least equal to the remaining period of protection referred to in Article 10 of Directive 96/9/EC.
ii.The following persons and undertakings shall be deemed to comply with the requirements of Article 11 of Directive 96/9/EC:
(a) United Kingdom nationals;
(b) persons with a habitual residence in the United Kingdom;
(c) undertakings formed in accordance with the law of the United Kingdom and having their registered office, central administration or principal place of business within the United Kingdom; where such an undertaking has only its registered office in the United Kingdom, its operations must be genuinely linked on an ongoing basis with the economy of the United Kingdom.
Article 55
Right of priority with respect to pending applications for European Union trade marks and Community plant variety rights
i.Where a person filed an application for a European Union trade mark in accordance with Union law before the end of the transition period and where that application was accorded a date of filing, that person shall have, for the purpose of filing a trade mark application in the United Kingdom for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed in the Union, an ad hoc right of priority in the United Kingdom during a period of six months from the end of the transition period. That right of priority shall have the effect that the date of priority of the application for the European Union trade mark counts as the date of filing of the trade mark application in the United Kingdom for the purpose of establishing which rights take precedence.
ii.Where a person filed an application for a Community plant variety right in accordance with Union law before the end of the transition period, that person shall have, for the purpose of filing an application for the same plant variety right in the United Kingdom, an ad hoc right of priority in the United Kingdom during a period of six months from the end of the transition period. The right of priority shall have the effect that the date of priority of the application for the Community plant variety right counts as the date of application for a plant variety right in the United Kingdom for the purpose of determining distinctness, novelty and entitlement to the right.
Article 56
Pending applications for supplementary protection certificates in the United Kingdom
i.Regulation (EC) No 1610/96 of the European Parliament and of the Council35 and Regulation (EC) No 469/2009 of the European Parliament and of the Council36 shall apply in respect of applications for supplementary protection certificates for plant protection products, for medicinal products, or applications for the extension of the duration of such certificates, submitted to an authority in the United Kingdom before the end of the transition period where the administrative procedure for the grant of the certificate concerned or of the extension of its duration was ongoing at the end of the transition period.
ii.Any certificate granted pursuant to paragraph 1 shall provide for the same level of protection as that provided for in Regulation (EC) No 1610/96 or Regulation (EC) No 469/2009.
Article 57 Exhaustion of rights
Rights conferred by an intellectual property right which were exhausted both in the Union and in the United Kingdom before the end of the transition period under the conditions provided for by Union law shall remain exhausted both in the Union and in the United Kingdom.
