Ensuring business continuity

On 24 December 2020, the United Kingdom and the European Union concluded the EU-UK Trade and Cooperation Agreement (hereinafter the “Agreement”).

The Agreement includes commitments that provide high standards of protection and enforcement of intellectual property rights. This includes registered IP rights such as patents, trademarks and designs, and unregistered rights such as copyright, trade secrets and unregistered designs.

These provisions refer to, and in many areas exceed, the standards set out in international agreements such as the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), the Rome and the Berne Conventions, and the World Intellectual Property Organization (WIPO) treaties.

Protection under EU trademarks (EUTMs) ceased to extend to the UK on 1 January 2021, but owners of existing EUTMs continue to enjoy trademark rights in the UK because the UK Intellectual Property Office will automatically convert these into an equivalent UK trademark (at no cost).

EUTM applications still pending as of 1 January 2021 will need to be re-filed as a UK right within the nine months following the end of the transition period, i.e. up to and including 30 September 2021. However, owners will keep the original filing date of their pending EUTM.

It is generally advised that intellectual property agreements such as licences, co-existence or settlement agreements relating to IP rights be reviewed in order to assess the exact impact of Brexit.

Your contact for more details: Astrid Wagner (astrid.wagner@arendt.comand Faustine Cachera(faustine.cachera@arendt.com)

The eligibility criteria for registering .eu domain names are set out in Regulation (EC) No 733/2002, as amended by Regulation (EU) 2019/517. In particular, to register, renew or hold .eu domain names, an organisation, business or undertaking must be established in the EU or EEA.

As a result of the withdrawal of the United Kingdom, any UK registrant who cannot meet the eligibility criteria will have its .eu domain names withdrawn.

However, there are ways for an organisation that does not meet the eligibility criteria to retain its .eu domain names. For example, it could transfer them to an EU/EEA subsidiary, or to an EU/EEA distributor or agent under an appropriate agreement (addressing intellectual property issues in particular).

Withdrawn domain names will not be available to any other entity for another 12 months. However, on 1 January 2022, all of the withdrawn domain names will be revoked, and will be made available for registration by other entities.

Your contact for more details: Astrid Wagner (astrid.wagner@arendt.comand Faustine Cachera(faustine.cachera@arendt.com)