In brief

The Withdrawal Agreement provides that EU IP law will continue to apply in the UK until the end of the transition period on 31 December 2020. The UK will remain part of the EU trade mark, registered and unregistered Community design systems, and IP rights in the UK will remain exhausted for all goods that have been put on the market anywhere in the EEA before the end of the transition period (and vice versa). 

However, while the Withdrawal Agreement has been drafted to ensure continued protection of existing EU-level IP rights in the UK after the end of the transition period, businesses should be thinking now about how to ensure continued protection for their IP rights in the UK and EU, and make the transition as smooth as possible. 


What action do rightsholders need to take?

  • Review and potentially update agreements that refer to the EU as a territory, or which refer to registered EU rights, to ensure that the UK and UK rights are covered from 1 January 2021.
  • We recommend dual EU and UK filings for new applications for registered EU trade marks; although dual filings are not legally required until 1 January 2021, applications filed between now and 31 December 2020 will not proceed to registration before the end of the Transition Period. You should review on a case-by-case basis whether to re-file pending EU applications in the UK.
  • Consider the impact on your administrative support functions of the 'cloning' of new UK registrations, and be ready to audit key 'cloned' rights to ensure that the transferred rights are accurate.
  • Consider now, in advance, whether you may wish to opt out of 'cloned' UK registrations. 
  • Review ongoing EU disputes that have a UK connection. e.g., EUTM oppositions with any UK prior rights, or infringement actions including UK activities or parties.
  What will change? What will stay the same?
Trade marks

Existing EUTMs, and international registrations designating the EU, will no longer be valid in the UK. The UK will grant owners of rights registered before 31 December 2020 a new UK equivalent right. There will be no action necessary or cost incurred on the part of the holder and these rights will not be re-examined by the UK IPO.

Owners of pending EUTM applications and EU designations will have to actively apply in the UK for equivalent national UK trade mark protection under a new mechanism governed by UK law within 9 months after the end of the Transition Period.

From 1 January 2021, brand owners seeking protection in the UK will have to file a separate UK application.

The remainder of existing and pending EUTMs will still cover the EU-27 after the end of the transition period.

Brexit will have no impact on UK TMs.

For more information on EUTMs, International TMs and Brexit, click here

Designs

Existing Registered Community designs (RCDs) and unregistered Community designs (UCDs) will no longer be valid in the UK. These rights will be automatically replaced by comparable UK rights.

If you hold a pending RCD application, you will be able to apply to register a UK design within 9 months after the end of the Transition Period.

Any existing RCDs, UCDs and International (EU) designs will continue to cover the remaining EU member states.

For more information on Designs and Brexit, click here.

Patents The UK has confirmed that it will not seek membership of the Unitary Patent and Unified Patent Court post-Brexit. UK national patents and European patents - via the European Patent Office - will remain unaffected by Brexit since they are independent from EU membership.
SPCs

Authorisations from the European Medicines Agency will be converted into equivalent UK authorisations on 1 January 2021. 

Holders of existing UK SPCs which rely on an authorisation from the EMA may be asked to provide information on the converted UK authorisation after 1 January 2021. This will not affect the validity of the SPC.

Pending SPC applications will be examined under the current framework; there will be no need to refile a pending SPC application at the IPO.

Granted SPCs remain in force, and SPCs granted but not yet in force will come into force at the end of the associated patent term as normal.

The SPC manufacturing waiver is intended to be retained in the UK after Brexit.

Plant Variety Rights

Granted Community Plant Variety Rights (CPVRs) will be automatically brought over onto the UK Plant Breeders' Right (UK PBR) register without any fee. 

For CPVR applications which are still pending by the end of 2020, a UK application will be required for UK coverage.

Pending and granted CPVRs will continue to be recognized in the remaining 27 EU Member States

For more information on plant variety rights post Brexit, click here.

 

Trade Secrets No immediate impact. The UK has implemented the EU Trade Secrets Directive, although UK trade secret laws were already broadly in line with its requirements. UK trade secrets laws will be unaffected.
Copyright While Brexit will have no immediate impact on copyright protection in the UK, there is clear scope for divergence. The UK government has already indicated that it has no plans to implement the controversial EU Copyright Directive. Copyright is the least harmonised IP right. International treaties on copyright will ensure that the scope of protection granted: (a) in the UK to copyright works created and/or owned by all foreign nationals and companies; and (b) in the EU to copyright works created and/or owned by UK nationals and companies, will remain largely unchanged.
Database Rights

Sui generis database rights are an EU law creation. New UK originating sui generis database rights will no longer be enforceable in the EEA. Only UK citizens, residents, and businesses will be eligible for new database rights in the UK. 

Existing sui generis database rights will continue to be protected in the UK, and rights owned by UK nationals that qualified for protection in EU Member States before 31 December 2020 will also continue to be protected. 
IP agreements Existing and future licence and co-existence agreements, brand-sharing agreements, etc., may include a definition of the territory which refers to the EU - this may be the EU as constituted at the date of agreement or as constituted from time to time. In the latter case, the UK will fall outside the agreement from 1 January 2021.

English contract law, and its choice as the governing law of an agreement, will be unaffected by Brexit.

There may be an increase in time and cost from an enforcement perspective associated with a choice of English courts, but this is just part of the analysis when choosing a governing law and jurisdiction.

Exhaustion of rights

Goods placed on the market in the UK will not be considered exhausted in the EEA. Rightsholders will therefore be able to rely on their IP rights to prevent parallel import of goods from the UK to the EEA. 

Although the UK has taken steps to continue to recognise EEA exhaustion immediately after the end of the Transition Period, it's unclear what approach the UK will take in the longer term. It's therefore also possible that rightsholders will be able to rely on their IP rights to prevent parallel import of goods from the EEA to the UK.

The UK will continue to recognise EEA regional exhaustion immediately after the end of the Transition Period, although the longer-term position is unclear.