Brexit and Intellectual Property Rights

The UK and the EU are presently in the 'transition period' of their separation, which ends at 11pm on the 31 December 2020 (Exit Day). It is yet to be seen what relationship the UK will have with the EU, but the position regarding intellectual property rights post-Brexit has been largely determined.

Business as usual

Freeths LLP confirms that there will be no disruption for clients with EU trade marks or Community registered designs and we continue to offer our services for these rights after Exit Day. If you are concerned, please get in touch with the Intellectual Property team.

Trade marks - protecting your brand

Will EU trade mark registrations continue to provide protection in the UK post-transition period?

Yes. Owners of EU trade marks registered prior to 1 January 2021 will automatically be provided with a cloned equivalent UK trade mark. This will be free of charge; nothing is required of the trade mark proprietor to obtain the registration. A certificate will not be issued but details of the newly cloned mark will be available online. Trade Mark owners can opt out of receiving a cloned UK trade mark registration, if they so wish.

Will pending EU trade mark applications also be cloned free of charge at the UK Intellectual Property Office (UK IPO)?

No. Applicants will be given up to and including 30 September 2021 to apply (and pay a fee) to the UK IPO for an equivalent UK application. Provided that the UK application mirrors the pending EU application, the UK equivalent trade mark will be given the earlier filing date of the pending EU application and carries with it any international priority claimed by the pending EU application. It will however, be subject to examination at the UK IPO in the usual way, regardless of whether examination had already been completed at the EU IPO.

Will the UK cloned trade mark be maintained in conjunction with the existing EU trade mark?

The EU trade mark and the cloned UK trade mark will be treated as separate rights. Trade mark maintenance such as renewals will need to be done both at the UK IPO and the EU IPO to ensure that both marks remain registered.

Does a trade mark proprietor need to use the trade mark in the UK and the EU after the expiry of the transition period?

A UK and EU trade mark is vulnerable to revocation if the proprietor fails to make use of the trade mark for an uninterrupted period of five years or more. Revocation for non-use is not automatic, but enables a challenger to apply to have another's trade mark revoked.Use of a trade mark in the UK and EU prior to and including Exit Day will be taken into account for use to maintain UK/EU registrations (as applicable) for a limited period after Exit Day (to a maximum of five years).Owners of UK and EU trade mark rights should assess where they are using their mark and take steps to safeguard against revocation.

What happens to pending proceedings at the EU IPO? 

Opposition proceedings against the registration of an EU application based solely on an earlier UK right will be concluded and the UK right holder will need to consider filing opposition proceedings against any new UK application the EU owner may file for. Opposition proceedings against the registration of an EU application based on earlier UK rights and earlier EU rights will continue but will no longer take into account the UK rights. The UK owner will need to consider filing opposition proceedings against any new UK application the EU proceeds with.

Will international trade mark registrations with EU designations provide proprietors with protection in the UK further to the expiry of the transition period?

A mirrored UK trade mark registration will be created. This is not an international designation for the UK, but an exclusive UK trade mark which will need to be treated separately from the international mark. However the UK rights can be merged back into the international registration if required.

What happens to injunctions?

Where an injunction in place at 1 January 2021 prohibits acts in the UK which would infringe an existing EU trade mark registration, the terms of that injunction will be treated as if they also apply to the newly cloned UK trade mark.

How do I continue to stop counterfeit goods?

If you have an existing EU Customs Application for Action (AFA) in place prior to Exit Day, then a cloned AFA for the UK only will be created. A new EU AFA can be filed to cover the EU.

What do I need to with my domain names?

Owners of .eu domain names must have an establishment in the EEA. If UK based owners do not have an establishment in the EEA within 2 months after Exit Day their domain will be withdrawn.UK-based owners who do not have an establishment in the EEA within 1 year of Exit Day, will find their .eu domain names will be cancelled and made available for others to purchase.

Designs - protects your packaging, get up, or design

Will EU design registrations (Community Registered Designs) continue to confer protection after the transition period? Yes. A duplicate design will be automatically created as a UK registered design at the UK IPO, having the same registration and application dates as the Community Registered Design. There will be no fee for cloning the rights and proprietors are not required to do anything to benefit from the UK protection. The UK registered design and Community Registered Design will exist separately, requiring separate maintenance fees. Registered Design owners can opt out of receiving a cloned UK Design registration, if they so wish.

Will pending Community Design applications also be cloned free of charge at the UK Intellectual Property Office? No. If a Community Registered Design applicant wishes to be granted the protection in the UK, they will need to make a separate application (and pay a fee) to the UK IPO within 9 months of Exit Day.

Will international design registrations with EU designations provide proprietors with protection in the UK further to the expiry of the transition period? The owner of an international design registration will instead be granted an equivalent national right referred to as the re-registered international design. No formalities are required but the newly created right must be treated separately and maintained separately via the UK IPO.

Unregistered Community design - protects the shape and look of your products

What will happen to unregistered Community designs which have arisen prior to the end of the transition period? On 1 January 2021, unregistered Community designs (which protect novel designs throughout the EU) will cease to have effect in the UK. An equivalent continuing unregistered design right will be automatically established for the UK. This equivalent right will continue to have effect for the remainder of the three year term.

What will happen to unregistered design rights which arise after 1 January 2021? The UK presently has its own unregistered design right which will continue to apply after Exit Day. This right is similar to unregistered Community designs however the UK unregistered design right does not provide protection for surface decoration or the materials used. A 'supplementary unregistered design' (SUD) will be available as of 1 January 2021 to fill the gap. The supplementary unregistered design right will mirror the unregistered Community design rights and will exist for three years from first disclosure in the UK. Caution should be exercised as disclosure in the EU may prevent the designer from claiming a SUD. This is because novelty in the design is required to establish the rights and disclosure in one territory negates novelty in the other. Designers should consider if and how they simultaneously disclose their design across both jurisdictions.

Patents - protects inventions

Will European patents be affected by Brexit? European patents are be unaffected by Brexit. Copyright - protects written, musical or artistic work (including technical drawings)

Will copyright be affected by Brexit? Copyright will be unaffected by Brexit at the end of the transition period. That said, the EU is due to bring about legislative change in the near future which the UK will not introduce and so, UK and EU copyright law may diverge over time.

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