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17 August 2020
The government has published a further Brexit IP Regulation, the Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (draft).
The draft Regulation corrects and clarifies certain provisions in the five Brexit IP Regulations that came into force last year. It also incorporates the UK's obligation in the Withdrawal Agreement to ensure that the outcomes of EUTM and Registered Community Design (RCD) cancellation actions that are pending at the end of the Brexit transition period – currently 31 December 2020 – bind the comparable UK right. The latter was not included in the original Brexit IP Regulations since those Regulations were drafted with a no deal Brexit in mind and so did not cover all the UK's obligations under the Withdrawal Agreement.
The new procedure will be relevant to anyone involved in EUTM or RCD cancellation actions at the end of 2020. We summarise the new procedure and review the latest UKIPO and EU Commission Brexit guidance below.
What is covered?
What is the procedure?
How will cases be decided?
What is the effect of cancellation?
The cancellation of the comparable UK trade mark will be deemed to take effect on the same date that the cancellation of the EUTM is deemed to take effect under the EUTM Regulation.
Subject to any claim for compensation for damage caused by negligence or lack of good faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment of the proprietor, the cancellation of the comparable UK trade mark will not affect:
What about designs?
The provisions in relation to re-registered designs are identical except that they only apply if the corresponding RCD is declared invalid (there being no relevant revocation action for RCDs).
What should I do next?
Those involved in EUTM and RCD cancellation actions that are unlikely to be finally resolved by the end of 2020 should seek advice. There might be strategic advantages to accelerating or decelerating the action. Likewise, those about to file a cancellation action should carefully consider the grounds and prior rights relied upon.
The UK has updated its guidance on the implications of Brexit for IP rights. It confirms that comparable UK trade marks deriving from International registrations (IRs) designating the EU will be national UK rights, falling outside of the International (Madrid/WIPO) system. They will therefore have to be administered and renewed separately from the IRs from which they derive. The same is true for International designs designating the EU.
The EU Commission has also issued a new Notice to Stakeholders on the implications of Brexit for trade marks and designs and exhaustion of rights. The latter confirms that, after the transition period, IP rights will not be exhausted in the EU if goods protected by the IP right have been lawfully put on the market in the UK. Rights-holders might therefore be able to object to the import of goods from the UK into the EU on the basis of their IP rights.
For further information on this topic please contact Louise Popple at Taylor Wessing by telephone (+44 20 7300 7000) or email (firstname.lastname@example.org). The Taylor Wessing website can be accessed at www.taylorwessing.com.
This article has been reproduced in its original format from Lexology – www.Lexology.com.
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