Update - Brexit transition- what about IP rights?
The European Commission issued a readiness notice on June 25th 2020, to provide further guidance on what will be the terms of the regulation of IP rights after the end of the transition period.
The notice addresses the phenomenon of the exhaustion of the IP rights. This phenomenon prevents the IP right holders from invoking the intellectual property right in question to prevent any further resale, rental, lending or other forms of commercial exploitation of the good by third parties, once a certain good has been lawfully introduced in the EU, in conformity with IP law.
This phenomenon poses some criticalities after the end of the transitional period, as the intellectual property right is not exhausted in the European Union if a good protected by that right has entered the UK market. As a consequence, the holder of the IP right protecting that good could prevent commercial exploitation of that good in the EU market.
However, the notice clarifies that art. 61 of the Withdrawal agreement between the EU and UK tackles this problem, determining that those IP rights which were exhausted both in the EU and in the UK before the end of the transition period will be considered exhausted both in the European Union and in the United Kingdom.
The attention on IP rights is high from both EU and UK side. The European Commission has in fact recently opened a call for feedback on a roadmap on how to better protect IP rights going towards a digitalized economy (deadline for comments is set for 14 August 2020).
Moreover, the United Kingdom has recently issued a Guidance on what the regime of international trade mark registrations filed under the Madrid Protocol will be after 1 January 2021. The Guidance clarifies that from that date onwards, protected international trademark registrations designating the EU will no longer be valid in the UK and that they will be immediately and automatically replaced by UK rights. This will be done by means of creating comparable trade mark (IR) in relation to each international (EU) trade mark designation. As a consequence, each trade mark holder may end up having multiple comparable UK trade marks corresponding to a single international registration done under the old regime.
Comparable trademarks will be as well created for any international registration that has expired in the 6 months prior to 1 January 2021.
For the pending EU designation on January 1st 2021, the applicants will be granted the possibility to apply to register a UK trade mark in the 9 months following the latter date and retain the earlier filing date of the pending EU designation.
The Guidance also addresses issues as trade mark seniority and use, priority date, renewals and restorations.
Francesca Zuccarello Cimino
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