When was Brexit?
The UK left the European Union on 31 January 2020, and the withdrawal finally took effect, for IP rights, on 31 December 2020.
This means that for IP matters, EU law no longer applies to, or in the UK.
What IP rights have been affected by Brexit?
EU trade marks and EU registered design rights have been affected. Since the expiry of the transition period, on 31 December 2020, new EU trade marks and EU registered designs are no longer effective in the UK. For a trade mark or design to be recognised in the UK an application will now need to be filed at the UK Intellectual Property Office (UKIPO).
Patents have not been affected by the UK’s departure from the EU, at all. There are no EU level rights for patents at present. The European Patent Convention, which governs the granting of European patents, is not a piece of EU legislation and so no action is required in this sense.
There is still a question mark around what will happen to the Unified Patent Court (UPC), which is a proposed single Court for the enforcement of European patents. Having initially ratified the Unified Patent Court Agreement (UPCA), the UK withdrew its ratification on 20 July 2020. This means that the UK will not participate in the Unified Patent Court when it finally comes into existence. Meanwhile Germany is yet to ratify the UPCA, following resolution of a constitutional complaint in March, though it is still possible that further constitutional complaints will be filed. It remains to be seen what form the unitary patent project will take without the UK’s participation and indeed if the project is still viable.
Have my EU trade mark rights ceased to exist?
No, your EU rights will continue to exist. Now that the transition period has ended, the UKIPO has automatically created equivalent UK trade marks for all EU trade marks that were registered (i.e. granted) before the end of 2020, and no action is required on your part. These equivalent marks will retain the filing dates of the original EU trade marks, and will also retain any priority and/or seniority dates. Of course, your EU trade marks will continue to exist as normal, with the only difference being that they will now cover the remaining 27 EU Member States, and not the UK.
The same has happened with EU registered designs – they have automatically been granted an equivalent UK national right. There should be no re-examination of any equivalent UK national rights (trade marks or designs) created under these provisions.
Will I receive a new registration certificate now that my new comparable UK right has been created?
No, the UKIPO are not planning to issue new registration certificates. You will be able to view details of your new equivalent UK right on the UKIPO website.
What if I have a pending EUTM or EU Design at the end of the transition period, on 31 December 2020?
If your EU right was still pending on 31 December 2020, an equivalent right will not have been created automatically. You now have a period of nine months (i.e. until 30 September 2021) during which you can apply to register your EU right as an equivalent UK right. The normal UK filing fees will apply, and the equivalent right will retain the same EU filing/priority date. These new applications for equivalent rights will be examined in the same way as normal new UK applications.
Will Brexit affect my International Registration?
Yes. Any International Registration designating the EU will now only be valid in the remaining 27 EU Member States, and will no longer have effect in the UK.
The UK will automatically create UK national equivalent rights (not designations under the IR) for International registrations designating the EU. These equivalent rights will retain the filing dates of the original International registrations, and will also retain any priority and/or seniority dates.
For pending International applications, owners will again have until 30 September 2021 to file for equivalent UK rights while retaining the filing/priority date of the pending IR designating the EU. The normal UK application fees will apply, and the new applications for equivalent rights will be examined in the same way as normal new UK applications. These international provisions apply both to trade marks and designs.
Do I need to appoint an EU-based attorney now – and are Forresters prepared?
Forresters are very well prepared for Brexit, and you do not need to appoint different attorneys – we are still able to represent you. Not all UK firms will be able to continue their representation before the EUIPO but Forresters has a number of measures in place whereby we will continue to represent our clients seamlessly before the EUIPO.
Do I need to do anything else?
To ensure that your UK protection is accurate and secure, we strongly suggest the following:
• Ensure that you have accurate lists of all EU rights (including IR(EU) rights) which were granted before 31 December 2020, so that a check can be made for the proper creation of the cloned UK equivalents
• Check, carefully, that the UK cloned rights ‘mirror’ the original EU rights, in all respects
• Check – and double-check – that the cloned UK rights are specifically being monitored for renewals purposes (they will all now need to be renewed independently of the original EU rights); and
• Appoint Forresters as your UK representatives for all the cloned rights, so that we safely receive / deal with all important UKIPO notices (which are still sometimes sent by post)
Please ask your usual contact for details, or if you have any questions whatsoever.