Since the deadline to agree a Brexit deal of 31 October 2019 was extended to 31 January 2020, the UK’s legal landscape has changed. The UK’s revised Withdrawal Agreement Bill has been approved by both UK and European lawmakers, and will allow the UK to leave the EU on 31 January 2020 with a deal in principle. This is not the end of the withdrawal process. We look at the effects on legislation, and the practical effects for IP rights holders.

Legal framework and processes

  • The UK is set to leave the European Union at 11pm UK time on 31 January 2020 (“Exit Day”) with a deal. The Withdrawal Agreement Bill has passed both UK houses of parliament, and has now passed the European Parliament in time to seal the UK’s exit on Exit Day.

  • After leaving the UK will immediately enter the “transition period” until 31 December 2020, where it will still be treated like an EU Member State. A clause in the Withdrawal Agreement Bill precludes any extensions to the transition period. As a matter of constitutional law this clause may be ineffective, and is generally interpreted as a statement of intent for the current government’s policy.

  • During this transition period, the UK will attempt to negotiate new trade deals with the EU and other territories. Frequent reference to “negotiating a [trade] deal” should not be confused with the “[withdrawal] deal” already agreed. No trade deal at the end of 2020 will have far reaching practical effects on movement of goods between the UK and EU.

  • At the end of the transition period, the UKIPO will clone any registered EU trade marks (EUTMs) and Registered Community Designs (RCDs) to create new, equivalent UK rights. These rights will enjoy the same seniority and priority dates. There will be no official fee. The UKIPO has stated that international trade mark and design registrations protected in the EU will also continue to enjoy protection as a separate UK right.

  • Where an EUTM or RCD renewal date falls after the end of the transition period, early payment of the renewal fee at EUIPO, before 1 January 2021, will have no effect in respect of the equivalent cloned UK right. A separate UK renewal fee will be required.

  • Pending EUTMs and RCDs can be cloned, but an application must be made in the 9 months following the end of the transition period. An official fee will be charged.

  • An RCD which is deferred at the end of the transition period will be considered “pending”, and will not receive an automatic corresponding cloned UK right. An application can be made for a cloned UK right.

  • Owners of three-year unregistered community designs valid at the end of the transition period will enjoy continued protection in the UK under a new continuing UK unregistered design right for the reminder of the three-year term. For designs first disclosed in the UK after the end of the transition period, a new supplementary unregistered design right (SUD) may be available for a three-year term in addition to the longstanding UK national unregistered design right, which has different qualification requirements.  Careful consideration should be given to disclosure, as first disclosure in the EU but outside the UK may not establish an SUD, subject to interpretation by the Courts.

  • Patents will not be affected by Brexit. Supplementary Protection Certificates (SPCs) are subject to EU law, but the UK will be preserving all EU laws including the law governing SPCs. The UK government will maintain existing SPC rights already granted and ensure a smooth transition. It will continue to be possible to apply for SPCs.

  • UK-based Geographic Indications will be automatically brought onto the new UK GI register.

Practical effects for IP rights holders and practitioners

  • EUTM and RCD applications yet to be filed could be registered before the end of the transition period, and receive the free cloned UK equivalent right.

  • After the end of the transition period, the EU will not be able to refuse EUTM applications on the basis of an objection (absolute or relative) which applies only in the UK. English will remain an official language of the EU, and English language objections can still be issued.

  • For EUTM contentious proceedings involving genuine use: Use of an EUTM, in the UK, before the end of the transition period will constitute genuine use of that EUTM; use of that mark, in the UK, after the end of the transition period, will not constitute genuine use of the EUTM.

  • For UK trade mark contentious proceedings involving genuine use:  Use of an EUTM, outside of the UK but within the EU, before the end of the transition period will constitute genuine use of a corresponding cloned UK registration; use of that mark outside of the UK but within the EU, after the end of the transition period, will not constitute genuine use of the cloned UK trade mark right.

  • From the end of the transition period, the UK government will recognize exhaustion of rights for goods sold into the EEA. This leads to asymmetric exhaustion of rights. Goods sold in the UK first and then sold in the EEA may therefore face objections from rights holders and customs officials.

  • Ongoing disputes featuring EU-wide rights in both the UKIPO Tribunals and UK Courts which began before the end of the transition period will continue to their conclusion.

  • For an EU-wide right (such as an EUTM or RCD) subject to any agreements, assignments, licenses and security interests, effective prior to the end of the transition period, the agreement will carry over to the respective cloned UK right. However the wording of that agreement will require amendment to reflect the creation of the new UK right.