So here we are, the transition period is coming to an end on 31st of December and you may wonder what the implications for intellectual property are. Will EU rights still be valid in the UK? Various types of IP rights will be affected differently by Brexit [1]. This short article intends to give a brief overview of some of the key points to take into consideration.

 Patents

European patents and European patent applications will not be affected by Brexit. European patent applications are examined before the European Patent Office (EPO) following the legal framework provided by the European Patent Convention (EPC). The EPC being a multilateral treaty that is independent of the EU, the contracting states to the EPC includes both EU and non‑EU states. The UK will remain a contracting state to the EPC [2].

Registered EU Trade Marks and EU Designs

Registered EU Trade Marks (EUTMs) and EU (Community) Designs are filed and registered before the European Intellectual Property Office (EUIPO), which is a European Union agency. At the end of the transition period, registered EU Trademarks and EU designs will cease to apply in the UK. However, the Withdrawal Agreement has placed an obligation on the UK to create new comparable rights in the UK, hence giving continued protection in the UK. The creation of these rights will occur on 1st January 2021 unless the applicant decides to opt‑out [3].

In practice, for registered EUTMs, the UK Patent Office (UKIPO) will create a “comparable” UK trade mark which will be recorded on the UK Trade Mark Register and have the same legal status as if you had applied for and registered it in the UK. The new UK trade mark will keep the original EU trade mark filing date and be a fully independent UK trade mark that can be challenged, assigned, licensed, or renewed separately from the original EU trade mark. Applicants having pending applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection. Similar procedures will apply for EU (Community) Designs, as well as for international trade marks and designs designating the EU.

In order to maintain a registered EU trade mark, it is necessary to use the mark in a “genuine manner”. Following a grace period of five years the owner of the mark may be required to demonstrate the use of the mark for the relevant good and services, for instance in opposition proceedings. After the end of the transition period, the use of a EUTM in the UK will not qualify as use in the EU for the purpose of maintaining the rights conferred by registration of a EUTM. Similarly, after the end of the transition period, the use of a created “comparable mark” in the EU will not qualify as use in the UK for the purposes of maintaining the rights conferred by registration of the comparable mark. Only use of the comparable UK right in the UK will be relevant [4].

Unregistered Community Designs (UCDs)

An Unregistered Community Design (UCD) may protect the appearance of whole or part of a product, which may be a shape or decoration.  This includes for instance clothing designs and patterns. Unlike registered designs, the unregistered design does not require filing.  Protection starts on making the design available to public within the EU, and last for three years from that date.

Holders of UCDs existing before the end of the transition period can continue to enforce their rights in the UK for the remainder of the three years term as ‘continuing unregistered designs’.

From the 1st January 2021, a new right dubbed supplementary unregistered design (SUD), that mirrors the characteristics of the UCD will become available in UK law [5]. The SUD will be established by first disclosure in the UK. However, there is no reciprocity, which means that a first disclosure in the EU will not establish a SUD right, and could in fact become a novelty destroying disclosure for a future UK unregistered right. Similarly a disclosure in the UK will be a novelty destroying disclosure for the purpose of the EU. Therefore after the first of January, designers need to consider very carefully where to disclose their product first depending on their commercial and market strategy.

Representation before the EUIPO

From the end of the transition period UK representatives will no longer be entitled to represent parties in proceedings before the EUIPO. Your legal adviser should have put in place alternative measures to guarantee that your registered trade mark and registered design rights are still looked after appropriately.

Conclusion

Brexit may impact other aspects of IP management and IP enforcement. For instance, you may want to review the terms of licence agreements to check how “EU” has been defined and whether the licence will still cover use in the UK.

Depending on the nature of your IP, and how actively you may want to enforce your rights it is always a good idea to seek advice on these matters. The Scintilla team is here to guide you through the process and take you safely into 2021!

 

References

[1] https://www.gov.uk/government/news/intellectual-property-after-1-january-2021

[2] https://www.epo.org/news-events/news/2018/20180125.html

[3] https://euipo.europa.eu/ohimportal/en/brexit-q-and-a

[4] https://www.wipo.int/madrid/en/news/2020/news_0015.html

[5] https://www.gov.uk/guidance/changes-to-unregistered-designs-after-the-transition-period