IP Post Brexit

Deep into November, it is still unclear what sort of trade deal - if any - will take effect at the end of the transition period on 1 January 2021.  Regardless of the outcome of any negotiations between the UK and the EU, the position on intellectual property rights is set to change, and below we have summarised some of the key points to be aware of.

Trade Marks

EU trade marks registered before the end of the transition period

Under the terms of the Withdrawal Agreement, the UK Intellectual Property Office (IPO) will automatically create a comparable UK mark for each EU registered mark at the end of the transition period.  The UK mark will be recorded on the UK trade mark register with the original filing date for the EU mark.  The UK mark will also keep any original priority or seniority dates and will be fully independent, so it can be licensed, challenged, assigned, or renewed separately from the original EU mark. 

You will not have to complete any paperwork or pay a fee for obtaining the UK mark, and no registration certificate will be provided, so if you want to see evidence of the comparable UK mark you will have to look on the UK trade mark register.  If you do not want to receive a comparable UK mark then you can opt-out by applying to the IPO at the end of the transition period, however as no action is required to obtain the UK mark, you may wish to wait until the point of renewal (when renewal fees are payable) to decide whether or not to keep the mark.  

The above position also applies if you have an international trade mark designating the EU which is registered before the end of the transition period.

EU trade marks pending at the end of the transition period

An EU mark which has been applied for, but has not been registered by the end of the transition period, will not automatically be granted protection in the UK.  Instead, you will have to apply for protection in the UK by 30 September 2021.  The application will be subject to UK examination and publication requirements, and the standard UK application fee will be payable.  The UK mark, once registered, will retain the earlier filing date of the pending EU mark.

The above position also applies if you have an international trade mark designating the EU which is still pending at the end of the transition period.

Designs

Community designs registered before the end of the transition period

If you have a registered community design (RCD), the IPO will automatically create a registered UK design at the end of the transition period in respect of that RCD.  The UK registered design will keep the RCD filing date and the original priority date.  It will be recorded on the UK designs register, have the same legal status as if it have been applied for and registered under UK law, and it will be a fully independent UK design, so it can be licensed, challenged, assigned, or renewed separately from the original RCD.  

You do not have to complete any paperwork or pay a fee for obtaining the UK design, and you will not receive a registration certificate, so if you want to see evidence of your UK design you will have to look on the UK designs register. 

If you have a RCD but do not want to protect the design in the UK, then you can opt out by writing to the IPO after the transition period, however as no action is required to obtain the UK design, you may wish to wait until the point of renewal (when renewal fees are payable) to decide whether or not to keep the design. 

The above also applies if you have an international design designating the EU which has been registered prior to the end of the transition period.

Community designs pending at the end of the transition period

If you have applied to register a community design, but it has not been registered by the end of the transition period, in order to protect the design in the UK you will have to apply to the IPO by the 30 September 2021.  The application will be subject to UK examination and the standard UK application fee will be payable. 

The above also applies if you have applied for an international design designating the EU, but it has not obtained protection by the end of the transition period.

Unregistered Designs

If you have any unregistered community designs (UCD) that arise before the end of the transition period, they will continue to be protected as a UK unregistered design for the remainder of their three year term.  This will happen automatically.

In addition, from 1 January 2021, a supplementary unregistered design (SUD) will become available in the UK.  The SUD replicates the UCD and sits alongside the UK unregistered design right.  The scopes of protection in respect of the SUD and the UK unregistered design are different with SUDs protecting surface designs. 

The SUD will provide three years of protection from the date when the design is first made available to the public in the UK.  By contrast, the UK unregistered design right lasts for a maximum of 15 years from when it is first recorded in a design document (or 10 years after a product incorporating the design was first sold if that is earlier).    

Patents

The European Patent Office (EPO) is not an EU agency and so leaving the EU has no impact on the European patent system.  EU patents covering the UK will be unaffected.  European patents can be filed through the IPO or through the EPO.

Copyright

Leaving the EU does not have a significant impact on copyright works as it does not impact on the UK’s participation in the international treaties on copyright.  Regardless of whether the copyright works (such as music, films and literary works) were created before or after the transition period, UK copyright works will still be protected in the EU and the UK, and most EU copyright works will continue to be protected in the UK.  

If you have any queries in respect of the above summary, or if you would like to discuss any of the points raised, please do not hesitate to contact a member of our Commercial and IP Team who would be happy to help.

Posted on: 30/11/2020

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

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