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EC confirms EU IP rights will cease to apply to UK as of 30 March 2019


While Article 50(3) of the Treaty on European Union does allow for any withdrawal agreement to put a transition period in place to extend this timeframe, this latest Notice from the European Commission makes clear that unless that agreement is ratified in time, all Union primary and secondary law will cease to apply to the UK from 30 March 2019. “This is potentially the ‘nightmare scenario’ we thought might happen,” says Novagraaf’s Alastair Rawlence, adding that there was no guarantee that a transitional period/alternative withdrawal date would be agreed.

As of 30 March 2019 at 00.00h, the UK will become a "third country", reads the Notice, and – subject to any transitional arrangement that may be contained in a possible withdrawal agreement – EU rules on EU Trademarks and Community Designs will no longer apply, namely:

  • EU trademarks and registered Community designs, as well as unregistered Community designs will continue to be valid in the EU27 member states, but will no longer have effect in the UK as from the withdrawal date.
  • Any application for an EU trademark or for a registered Community design pending before the withdrawal date will no longer cover the UK as from that date.
  • Any right granted by EUIPO on or after the withdrawal date will only cover the EU27 member states.
  • All existing seniority claims in EU trademarks based on national trademark rights in the UK will cease to have an effect in the EU as from the withdrawal date.
  • Holders of international registrations of trademarks and designs having designated the EU before the withdrawal date, should consider that, as from that date, those international registrations will continue to be valid in the EU27 member states only and thus will no longer have effect in the UK.

‘A third country’
CITMA, INTA, MARQUES and the European Commission itself have all released position papers in recent months (see summary here); however, as of yet, there has been no official response from the UK government. This latest Notice not only steps up the heat on the issue, but also appears to be calling directly on companies to begin to act to protect their valuable IP assets themselves in the absence of any official guidance from the UK:

“Holders of an EU Trademark, registered Community design or unregistered Community Design, [as well as] all applicants or any business operator [...] are reminded that preparing for the withdrawal is not just a matter for European Union and national authorities, but also for private parties,” it reads.

“In view of the considerable uncertainties, in particular concerning the content of a possible withdrawal agreement, all right-holders and applicants are reminded of certain legal repercussions stemming from currently applicable rules of Union law when the UK becomes a third country, and which need to be considered and anticipated.”

What will it mean for patent rights?
As things stand, there will be no change to the current way in which European patents can be obtained, maintained or litigated in the UK. The Brexit vote does not mean the UK ceases to be a member state of the European Patent Convention (EPC) that established the European Patent (EP) system. The EPC is not a direct instrument of the EU legislature; it is a multilateral treaty agreed by the member states that are signatories to it. At present there are 38 member states of the EPC and only 28 member states of the EU. Following Brexit, the UK will become one of the EPC member states that is not an EU member. Even after Brexit, therefore, companies will be able to file an EP application designating the UK. 

However, in the future, when the Unitary Patent and Unified Patent Court (UPC) system come into being, this alternative way of obtaining a Europe-wide patent and the alternative Court to litigate patents in Europe would in theory not apply to the UK; although the government has still taken first steps to ratify the UPC Agreement.

Novagraaf will shortly be issuing updated guidance to clients on the recommended course of action to protect their IP rights in the UK given this latest warning from the European Commission. Do not hesitate to get in touch with your attorney in the meantime (or contact us here) if you require further guidance and support.