The Gatherer - Volume 8

and priority claims of a corresponding EU application. So, applicants will be faced with the cost of re-filing an EU application under the UK application fee structure if corresponding protection in the UK is required. What about patents? As we reported in Vol. 6 of The Gatherer, European patents are granted under the European Patent Convention (EPC), which is not an EU treaty and has numerous member states that are not EU members. As such, Brexit will have no impact on European patents and the UK will remain a member of the EPC post-Brexit. The international patent application (PCT) system administered by WIPO and UK national patents will also be unaffected by Brexit. There may, however, be repercussions for the UK’s intended participation in the proposed new Unitary Patent and Unified Patent Court (UPC) in Europe following Brexit. (See our article in Vol. 6 of The Gatherer). The UK ratified the UPC Agreement in April 2018 indicating its desire to be part of these new arrangements despite Brexit. Indeed, London was intended to host a branch of the Central Division of the Unified Patent Court responsible for chemicals, pharmaceuticals and life sciences. But Brexit, and especially a ‘No Deal’ Brexit, places a question mark over this. As the UPC Agreement has been delayed by a complaint to the German Constitutional Court and it is still not clear when (some say ‘if’) it will come into effect, such repercussions for the UK are still hypothetical at this stage.

The UK Intellectual Property Office has advised that, should a ‘No Deal’ Brexit occur, the UK Government will ensure that the property rights in all existing EUTMs and RCDs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registration in the UK. Right holders with an existing EUTM or RCD will have a new UK equivalent right granted (at no cost to the right holder) that will come into force at the time of the UK’s exit from the EU. The trade mark or design will then be treated as if it had been applied for and registered under UK law. This means that these UK trade marks and designs: • will be subject to renewal in the UK • can form the basis for proceedings before the UK Courts and the UK Intellectual Property Office’s Tribunal, and can be assigned and licensed independently from the EU right. The same provisions will apply for international registrations designating the EU filed with the World Intellectual Property Organisation (WIPO) under the ‘Madrid’ and ‘Hague’ systems. Importantly, however, the automatic issuance of an equivalent UK registration will not apply to pending applications for EUTMs or RCDs. Applicants for EUTMs and/or RCDs will need to re-file their applications with the UK Intellectual Property Office if they wish to secure that same protection in the UK. To facilitate this, a period of 9 months from the exit day will be provided in which the UK will recognise the filing dates •

Watch this space

The political situation in the UK remains fluid and the eventual outcomes associated with Brexit are yet to unfold. Whatever happens, we shall keep you informed about how the developments there may affect your intellectual property.

BREXIT UPDATE

assured his constituents will be the case… ‘come what may’), the UK will then naturally cease to be a member of the EU. This raises the question: What happens to existing rights from EUTMs and RCDs that are currently enforceable in the UK as an EU member state? This is not itself a new question. In anticipation of the UK leaving the European Union, one of the matters set out in the draft Withdrawal Agreement negotiated over two years between the UK and the EU was a post-Brexit transition period during which EU law would continue to apply in the UK. This transition period would provide the UK time in which arrangements for an orderly transition could be made, including

time to ensure the continuity of intellectual property rights. But, as we know, the situation in the UK has been anything but orderly. What about a ‘No Deal’ Brexit? The question has now gained more interest and urgency following the UK House of Commons’ decisive rejection of the draft Withdrawal Agreement, and the failure of a majority in the House of Commons to agree on a way forward for the country. In the absence of a Withdrawal Agreement with the EU, the question is then: What happens to the rights from existing EUTMs and RCDs in the UK in the event of a ‘No Deal’ Brexit?

What happens to EU trade mark and design registrations in the UK with Brexit? The European Union, which currently numbers 28 member states, including the United Kingdom, provides a system of registered EU Trade Marks and Registered Community Designs (RCDs) via the EU Intellectual Property Office in Alicante, Spain. The EUTMs and RCDs are single registrations that have effect and are enforceable in all EU member states. If and when the UK does actually leave the EU, however, as is currently planned for 31 October 2019 (and which the new British Prime Minister, Boris Johnson, has

PHILIP GEHRIG Principal

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