Brexit and your IP: FAQs
Posted:
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.
With offices in the UK and Germany, Forresters continues to represent our clients seamlessly before the EUIPO. Our service remains unaffected by Brexit.
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.
Have my EU trade mark rights ceased to exist?
No, your EU rights 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 retain the filing dates of the original EU trade marks, and also retain any priority and/or seniority dates. Of course, your EU trade marks 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 did issue new registration certificates. You can 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. Applicants had until 30 September 2021) to apply to register their EU right as an equivalent UK right. The equivalent right retains the same EU filing/priority date.
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 automatically created UK national equivalent rights (not designations under the IR) for International registrations designating the EU. These equivalent rights retained the filing dates of the original International registrations, and also retained any priority and/or seniority dates.
For pending International applications, owners had until 30 September 2021 to file for equivalent UK rights while retaining the filing/priority date of the pending IR designating the EU. These international provisions apply both to trade marks and designs.
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 contact your usual Forresters attorney for further information, or if you have any questions.
