What does being the owner of a registered trade mark and / or design right now look like? What steps do you need to take to keep the benefits of an EU and UK registration?

We look at the position taking into account the recently approved trade deal between the UK and EU.

Changes to Intellectual Property Rights in the UK

Trade marks

As of 1 January 2021, the UK set about creating a comparable UK right, effectively a new UK trade mark registration, for all EU registered marks. Once entered into the UK Trade Marks Register (at the UKIPO) it benefits from the same legal status as if applied for under domestic legislation. The original EU trade mark filing date and relevant priority dates will be retained.

This process is being done automatically so you do not need to make a new application if this affects your portfolio.

You should be mindful that whilst a registered EU trade mark with a renewal date falling within the first six-months of 2021 will gain a UK comparable right automatically recognising its registered status at the end of the transitional period, it will incur separate renewal fees payable to the UK IPO even if the EU renewal fee was paid for in the 6 month window preceding the renewal date, and therefore before the transitional period expired.

For pending EU trade mark applications, there is a 9 month period whereby these will be converted into UK comparable rights (upon request rather than being automatic), carrying over the original filing date and priority date if applicable, with the cut off being 30 September 2021. Unfortunately, this is not cost-free. Without making the conversion to the UK comparable rights, any pending UK protection hoping to be gained from the EU trade mark will have ceased to exist from 11:00pm on 31 December 2020.

Design rights

Design rights will follow the exact same process as set above in relation to trade marks. A comparable right will be created in the UK and will benefit from the same rights and protection as if filed domestically.

Please be aware that, as with comparable trade marks above, design right equivalents designating the EU in any WIPO applications will need to be converted to UK comparable design rights by 30 September 2021. Again, this attracts a fee and any pending protection under the EU designation will have ceased to be effective in the UK from 11:00PM on 31 December 2020.

As with trade marks above, design rights registered in the EU with a renewal date that falls within the first six-months of 2021 will benefit from a UK comparable right for registered status from the end of the transition period, separate renewal fees will be payable to the UKIPO even where the EU renewal fee was paid in the 6 months to the renewal date, and therefore before the end of the transition period.

International designs

Similarly, the UK IPO will create a re-registered UK design for all international designs protected at the end of the transition period that designate the EU. Again this will be an automatic process.

The IPO has warned that re-registered international designs may not be displayed on the UK register on 1 January 2021 as they expect some delay in updating the systems. The IPO have, however, provided an assurance that rights holders will not be disadvantaged since the designs will have effect in law from that point.

Unregistered designs

Unregistered community designs arising prior to 1 January 2021 will be protected for the remainder of the three year term. A supplementary unregistered design will be available in UK law following the transition period and this will provide UK only protection similar to that of an unregistered community design.

The supplementary right will only be established by first disclosure in the UK (or qualifying country). First disclosure in the EU will not be sufficient to establish the supplementary right. You should therefore consider where to disclose your products to be sure they benefit from protection in the most important market to your business.

All trade mark and design litigation matters pending before the EUIPO prior to the end of the transition period and based solely on UK rights, were cancelled with effect from 1 January 2021. Only if these included EU-based rights will they continue.

Patents

Applications for a European patent continue to be available through the UK IPO in the usual way. The European Patent Office is not an EU institution so is unaffected by the UK’s withdrawal.

Copyright

Copyright protection in the UK will largely remain unchanged. The UK is a signatory to a number of International Treaties which are enforceable in relevant member states. EU copyright will also still be protected in the UK on this basis and applies regardless of whether the work was created before or after the end of the transition period.

Cross-border agreements on copyright which are unique to EU member states will, however, cease from 1 January 2021.

Representation at the EUIPO

One of the biggest changes will be the ability of UK attorneys to represent clients on new applications and proceedings at the EU Intellectual Property Office.

We will, however, be able to continue to represent you for any ongoing proceedings. In reality this is a procedural change that affects how we work rather than how you seek to protect or enforce your rights across the EU.

Birketts has an excellent network of agents we regularly use across the EU where local knowledge is required and have maintained such relationships to ensure you can still be represented before the EUIPO. As your first port-of-call we will be able to instruct recommended agents on your behalf and manage the matter as we would previously.

Conclusion

Overall, there will be little change to your intellectual property rights in how they subsist, how you seek protection and enforcement. If you currently have registered IPR then these will continue and you will not be disadvantaged by the UK withdrawal from the EU. These rights will still be available to you, it is how these are obtained procedurally by your UK representatives which changes.