Countdown to December 2020: Brexit Draft Agreement Provides Some Clues for Trademark Impact

BREXIT! A word that might have been unthinkable a mere two years ago now raises so many questions for today’s trademark professionals – but some of those key questions were recently answered, at least for now.

The European Commission published a draft agreement last month that details key issues related to the United Kingdom and Northern Ireland’s withdrawal from the European Union, which is now slated for a 19-month transitional period beginning on March 29, 2019 and ending in December 2020. Title IV of the extensive draft contains eight Articles (50 – 57) that address the treatment of intellectual property, including trademarks in addition to designs, geographical indications, databases, and plant variety rights.

In a fortunate turn for current EUTM (European Union trade mark) registrants , the draft agreement proposes “continued protection in the United Kingdom of registered or granted rights” – specifically, that a registered or granted EUTM will convert to a comparable, enforceable UK right. This new UK registration will convey the same renewal date as the corresponding EU registration.

The draft agreement does not indicate whether there will be a fee for the conversion of rights, a pressing question which will be included among those debated by the EU and UK negotiators in the coming months.

As to new and pending applications, the draft provides that EU applications filed before the December 2020 transition date will have a six-month period to claim priority via a newly filed UK application.

In a somewhat mystifying turn, the draft agreement does not address whether IP practitioners in the UK will be able to represent clients before the EU IP Office – a key outstanding matter for those attorneys, in addition to their clients and fellow attorneys around the world.

Although the draft agreement provides helpful guidance on the potential future of post-Brexit EU trademark rights, it is still very much a work in progress – and we, along with the rest of the global trademark community, are closely monitoring for further updates as December 2020 draws closer.

This article appeared in the March 2018 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.