BREXIT News for Intellectual Property Rights
What do you need to know about Brexit with regard to the protection of intellectual property rights?
The United Kingdom left the European Union on 31 January 2020, when the Withdrawal Agreement entered into force.
The Withdrawal Agreement stipulates that during a transition period that will last until 31 December 2020, the UK continues to be part of the European Union (EU) insofar as the protection of EU intellectual property rights (IPRs) is concerned.
BREXIT and EU IPRs During the Transition Period
During the transition period, the United Kingdom continues to be part of the EU and EU rules remain applicable in the United Kingdom. This applies to the European Union Trade Mark (EUTM) and Community Designs (CD) Regulations and their implementing instruments.
Consequently, all proceedings before the Office (EUIPO) based on grounds for refusal in relation to the United Kingdom, prior rights acquired in the United Kingdom, or parties/representatives domiciled in the United Kingdom, remain unchanged until the end of the transition period”.
What Will Happen After January 1st, 2121 for IPR Owners?
- Owners of EU trademarks and published Community designsregistered on transition period will automatically acquire a corresponding registered and enforceable UK right at no charge. The above corresponding registered UK rights will be treated as having the same renewal dates and filing/priority dates as the registered EU rights from which they derive and, in the case of trademarks, where appropriate, they will have the UK seniority of the corresponding EU trademark.
- Pending applications:where an application for an EU trademark or Community registered design is pending on transition period, it will not be converted into a corresponding UK application. However, within nine months of the transition expiry date, the applicant may apply for registration of the same trademark or design, maintaining the priority of the corresponding application for an EU right. The Withdrawal Agreement does not expressly deal with a Community registered design where publication is deferred, but it is likely that this will be treated on the same basis.
- International Registrations: The UK will take measures to ensure that international trademarks and design registrations designating the EU and protected in the EU before the transition expiry will enjoy UK protection.
Our Recommendations for Immediate Action
- For Community designs that are currently subject to deferred publication, consider requesting publication ahead of 31 December 2020 to ensure that a UK re-registered design is created automatically without payment of any official fees;
- For trademark and Community design rights that are due for renewal in 2021, consider whether you will wish to renew the ongoing EU right, the re-registered or comparable UK right, or both.
- Consider collecting evidence of use of your trademarks clearly distinguishing between EU and UK use, from 1 January 2021.
- Consider notifying any licensees or holders of security interests that the UK re-registered or comparable rights will be coming into effect on 1 January 2021.
- Consider your co-existence and license agreements to make sure these are Brexit compliant.
- Make sure to appoint an EU Representative for your EU IPRs as UK Representative will no longer be able to represent in the EU.
Please do remember the European Patent Office is not connected to the EU and therefore patents are unaffected by Brexit.
If you have any questions about Brexit or anything else IP related, please contact us at email@example.com
Anne DESMOUSSEAUX, Founding Partner Alta Alatis Patent
This post is also available in: French