Brexit by 31 January 2020, transition period ending 31 December 2020

The consequences for EU trade marks, Community designs and ongoing proceedings

Following British Prime Minister Boris Johnson’s convincing majority in the UK parliamentary elections of 12 December 2019, it now looks inevitable that the UK will ratify the version of the Withdrawal Agreement agreed by Johnson and the European Union in October 2019, thereby formally leaving the EU at 11pm UK time on 31 January 2020, just over a month from now. 

This Withdrawal Agreement removes the spectre of a no-deal and abrupt Brexit, providing for a transition period lasting until 31 December 2020 during which, for all intents and purposes, the UK would be treated as still being a member state of the EU.

With respect to EU trade marks and Community designs, and related ongoing proceedings, the Withdrawal Agreement provides for:

• continued protection in the UK of registered/granted rights existing at Union level as at the end of the transition period

holders of registered EU trademarks and registered Community designs - including those granted through international agreements (Madrid/Hague) –at the end of the transition period (31 December 2020) will, without cost and without examination, become holders of a comparable registered and enforceable right in the UK. The UK government had already confirmed that this would be the case even in a no-deal scenario, and that the process would be automatic, with the option to opt out of obtaining UK rights. No UK correspondence address would be required for at least 3 years. The Withdrawal Agreement further provides that where the originating Union right is cancelled 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 UK will also be cancelled (though the UK is not obliged to effect such cancellation where the grounds for cancellation did not apply in the UK, e.g. due to an earlier national right in a member state of the EU other than the UK). Comparable UK rights will enjoy the filing/priority or, where applicable, seniority date of the Union right. Comparable UK trade marks will not be subject to revocation for non-use on the ground that the corresponding EU trade mark had not been put into genuine use in the UK before the end of the transition period, meaning that use elsewhere in the EU would be taken into account, where applicable.

• A mechanism to maintain – for the UK – the filing/priority date of Union applications pending at the end of the transition period by filing a separate application in the UK for the same mark/the same design in the 9 months following the end of the transition period;
  
  
• continuation of rights in unregistered Community designs in the UK for the duration of their term (3 years from first disclosure; NB – the issue of entitlement to unregistered design rights post-transition will likely be a subject of future EU/UK trade negotiations);        
  
  
• continuation of existing EU law on the recognition and enforcement of judgments in civil and commercial matters, including the jurisdiction provisions of the EU Trade Mark Regulation and the Community Design Regulation, for all legal proceedings instituted before the end of the transition period, regardless of when they are concluded. This creates legal certainty and was in doubt in the case of a no-deal Brexit.     
  
  
• A continuation of the existing regime of exhaustion of rights for all goods placed on the EU/UK markets before the end of the transition period;
  
  
• rights for UK representatives to continue representing “in all stages of the procedure” before the EUIPO in procedures brought before the end of the transition period. 

The forwarding-looking aspects of the UK-EU's new relationship post-transition, including civil judicial and regulatory cooperation, and potentially recognition and enforcements of judgments in cases initiated after 31 December 2020, will be dealt with in the negotiations due to start in January 2020. Whilst there exists, in the Withdrawal Agreement, the possibility for the UK to request an extension of the transition period beyond 31 December 2020, Prime Minister Johnson's election manifesto included a commitment not to extend the period, and - at the date of writing this - he is also seeking to enshrine that position into UK law as part of the ratification of the Withdrawal Agreement.