Introduction
The United Kingdom left the European Union on January 31, 2020. A transitionary period is in effect until December 31, 2020. This has several consequences for holders of EU Plant Variety Rights and applicants for Plant Variety Rights in the EU and UK. There are also changes to trademarks which will impact some plant breeders and growers. This document details the author’s current understanding of the situation.
Most of the comments in this article relate to ornamental plant varieties. The situation for agricultural varieties, fodder and forestry crops is similar, but official fees are generally higher for those crops. The author would be glad to supply further information on request.
Key Points
- EU Plant Variety Rights remain in force in the UK until the transition period ends.
- Holders of granted EU Plant Variety Rights will receive a new UK Plant Variety Right at the end of the transition period (subject to conditions).
- After the transition period, there will be two separate Plant Variety Rights systems in the EU and the UK.
- Rights holders and applicants in the UK will need a procedural representative in the EU.
- Rights holders and applicants in the EU will need a procedural representative in the UK.
- Provisions for trademarks are similar (subject to conditions).
TRANSITION PERIOD
Under the terms of the Withdrawal Agreement between the United Kingdom and the European Union, the UK entered a “transition period” on February 1, 2020. This transition period is expected to last until December 31, 2020, although it may be extended by up to two years (although such extension would have to be agreed before 1 July 2020).
During the transition period, EU laws remain valid in the UK. In particular, the Withdrawal Agreement makes specific provisions for intellectual property rights including Plant Variety Rights and Trademarks. All EU Plant Variety Rights and EU Trademarks remain valid and in force in the UK until the end of the transition period, unless they expire before that transition period ends or are cancelled by the rights owner.
Dduring the transition period, UK-based applicants and holders of EU Plant Variety Rights are legally required to have a procedural representative located in the EU. However, the Community Plant Variety Office (CPVO) waived this requirement. A procedural representative will be required from the end of the transition period – you should look for an organization that has experience of managing Plant Variety Rights and is knowledgable of the CPVO systems and processes.
Plant Breeders Rights
The British government has already passed legislation concerning Plant Variety Rights and Brexit. It grants all holders of EU Plant Variety Rights that were granted and in force two months before the end of the transition period (i.e. on October 31, 2020 if the transition period is not extended) will receive a new UK Plant Breeders’ Right for that variety. This process will be automatic and free of charge. The new UK Plant Breeders Rights will have the same expiry date as the original EU Plant Variety Right.
For applications for EU Plant Variety Rights that have been submitted to the CPVO before the end of the transition period but not granted by that date, and for applications which are granted in the last two months of the transition period, new UK Plant Breeder’s Rights will not be granted automatically. Instead, if applicants wish to have protection in the UK they must submit an application to the UK Plant Variety Rights Office (PVRO) within a “grace period” of six months from the end of the transition period (until 30 June 2021 if the transition period is not extended). This is permitted even if the variety no longer satisfies the requirement for novelty – the date of application in the EU will be considered the date of application in the UK. The PVRO will then use the outcome of the CPVO DUS examination – no new DUS examination will be required. The official PVRO charge for the application is GBP 741.00.
Note that, if a UK application is made in the grace period and the plant variety fails its DUS examination before the CPVO, then it will also fail for the PVRO.
UK Plant Variety Rights Office
The new UK Plant Breeder’s Rights will be independent of the EU Plant Variety Rights once they are granted. For example, it will be possible to surrender the EU Plant Variety Right but retain the UK Plant Breeder’s Right, or vice versa.
UK Plant Breeder’s Rights have an annual fee in a similar way to the EU Plant Variety Rights. For ornamental varieties, the annual fee is currently nil. However, DEFRA have advised informally that they intend to increase the annual fee, probably in 2023. They have not stated what the fee might be, but it is reasonable to expect it to be in the range GBP 100 to 200 per annum. It will normally be payable in February each year.
Holders of UK Plant Breeder’s Rights who do not have an address in the UK must engage a procedural representative to act on their behalf before the PVRO.
TRADEMARKS
The British government has passed legislation concerning Trademarks and Brexit. All valid EU Trademarks in force at the end of the transition period will be granted a new UK Trademark with the same priority and seniority dates and the same renewal date. This process will be automatic and free of charge. The new Trademark will be valid for the same goods and services specified in the EU Trademark. The new Trademark can then be renewed in the normal way – the current fee is GBP 200 every ten years, plus GBP 50 for each additional class.
For EU Trademarks that are due for renewal in the six months before the end of the transition period and in the six months after the end of transition period, special rules apply. You should seek advice if this applies to you.
For EU Trademark applications that are pending approval at the end of the transition period, an application may be made for a UK Trademark within nine months of the end of the transition period, retaining priority and seniority dates. This attracts an official fee of GBP 170 plus GBP 50 for each additional class.
Like Plant Breeder’s Rights, there is a requirement for a procedural representative for applicants and holders based outside the UK.
PLANT VARIETY RIGHTS
All EU Plant Variety Rights granted after 31 October 2020 will have no validity in the UK after the end of the transition period. Therefore, if variety owners require protection in the UK and EU, they will need to make two applications.
For varieties where EU applications have been filed before the end of the transition period, special provisions apply as detailed above.
For applications made after the end of the transition period, variety owners must consider carefully whether there is financial justification for applying for both UK and EU Plant Variety Rights. Official costs for ornamental varieties are as follows (costs are different for agricultural and forestry varieties):
TRADEMARKS
Like Plant Variety Rights, EU Trademarks granted after the end of the transition period will have no validity in the UK after that date.
The official fees for a UK trademark application are GBP 200 per application including one class of goods or services – additional classes are charged at GBP 50 per class.
For EU trademark applications, you must engage a lawyer to file your paperwork on your behalf. There are specialist companies that can offer this service for a fixed fee.
ABOUT THE AUTHOR
Graham Spencer is director of Plants For Europe Limited (based in the UK) and Plants For Europe B.V. (based in the Netherlands). Plants For Europe offers breeder agency services to plant breeders, including the management of intellectual property rights such as Plant Variety Rights and Trademarks.
Graham founded Plants For Europe is 2003. Before that, he spent fifteen years working in specialist horticulture, running a perennial nursery in West Sussex. He is a Member of the Chartered Institute of Horticulture and a Member of the Chartered Institute of Marketing. www.plantsforeurope.com
Official fees described in this article are correct at the time of writing (March 2020).
Disclaimer: the author accepts no liability for the consequences of any action or inaction of readers of this article arising from information or opinions contained therein.