Brexit is now a done deal, and the Withdrawal Agreement provides that EU law will continue to apply in the UK until the end of the transition period, currently 31 December 2020, so there is no need for businesses to take immediate action to protect their IP. We provide an up-to-date summary of the impact for business owners when the transition period ends, and practical steps trade mark owners need to take to prepare.
Practical Tips for IP Owners
- There continues to be no need to re-file registered European trade marks (EUTMs) as new UK national applications. Use in the remaining EU27 within the five years prior to the date of exit will also support the validity of the newly created UK "clone" (see below).
- Dual trade mark filings (UK and EU) are not legally required at this time and until the end of the transition period, on 31 December 2020. Owners of EUTMs which were filed prior to the end of the transition period will be able to retain their date of priority from the EUTM in the UK by one of two mechanisms:
- EUTMs which are currently pending but which proceed to registration before the end of the transition period will automatically be cloned into UK registrations;
- EUTMs which remain pending at the end of the transition period can be extended to separate corresponding UK applications retaining the date of priority from the EUTM application by filing an application in the UK during the 9-month period after the end of the transition period. However, not all EUTM applications filed between now and the end of the transition period will achieve registration before 31 December 2020. Therefore, from the beginning of September 2020 (and for any applications filed prior to that where an objection which will delay registration to after 31 December 2020 are anticipated), if protection in the UK is required, it is recommended that a corresponding UK application is filed. Otherwise, a separate UK application would need to be applied for post-Brexit, incurring the same fees as a dual-filed UK application. The expectation is that registration of such UK applications could potentially be delayed as a result of an overload on the UK IPO system immediately after 31 December 2020. After 31 December 2020 (unless the transition period is extended), a separate UK application will be required in order to obtain a priority date in the UK.
- For EUTM applications which have already been filed and remain pending, we do not recommend re-filing now as new UK applications. The majority of these will proceed to registration before the end of the transition period and thus benefit from a free automatic UK clone. For those that have not, it will be possible to take advantage of the 9-month period from 31 December 2020 during which applicants can re-file pending EUTMs as UK national marks, while retaining the priority date (including any seniority date for the UK). Note, the same costs would be incurred as if you were filing a national UK application and no automatic notifications will be issued to EUTM rights owners by either the UK IPO or EU IPO of the expiry of the 9-month period and potential loss of rights in the UK, so this will need to be monitored by EUTM rights owners or their representatives.
- For EUTM designations under the Madrid system for international trade marks, the same recommendations apply. However, note that the corresponding UK cloned registration or actively applied for UK application will be national rights, not “cloned” EU designations.
- Consider the impact on your administrative support functions of the "cloning" of new UK trade mark and design registrations. Records will need to be created and updated for any "cloned" trade marks to ensure proper tracking of renewals and other deadlines.
- EUTM rights owners will be able to opt out of "cloned" UK registrations. Consider now (in advance) whether you may wish to so in order to avoid unnecessary clutter of rights in the UK that are of no interest. Note, however, that it is anticipated opting out would incur an official fee, in which case it may be more cost effective to simply allow cloned UK registrations that are not of interest to lapse on renewal.
- 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). As there are a number of complexities which may apply depending on the specific details of any particular dispute, individual strategies are likely to be needed.
- Consider defensive filing strategies and ensure your strategy maximises the possible advantages from filing a EUTM, where no bona fide intention to use is required (unlike the UK). Under the UK national system, trade mark applications filed without a genuine intention to use are deemed filed in bad faith and invalid, so it will no longer be possible to able to obtain protection in the UK for defensive filings.
- Existing and future licence and co-existence agreements, brand-sharing agreements, etc., may include a definition of the territory which refers to the EU. Any new agreements that include a definition of the EU (e.g., as the territory) should be clear whether it is the EU as constituted at the date of the agreement or as constituted from time to time. Review significant existing IP agreements that refer to the EU as a territory.
Overview of IP Rights after the transition period
The Withdrawal Agreement makes provision for continued protection of EU-derived IP rights in many circumstances. Where the Withdrawal Agreement is silent the position will, unless any future Free Trade Agreement (FTA) provides otherwise, be the same as it would have been under a no-deal Brexit. The table below sets out the current position, on the basis of the most recent guidance from the UK government and on the assumption that continued protection is not addressed in an FTA.
Transition period ends on 31 December 2020, with the post-Brexit regime applying as of 1 January 2021 .
Registered Trade marks & Designs
UK government will grant owners of registered European trade mark (EUTMs) and Registered Community Designs (RCDs) a new UK equivalent right. In effect, a "clone" of the EUTM or RCD with no action necessary or cost incurred on the part of the holder.
The "cloned" rights will not be re-examined, will enjoy the priority date of the EUTM (including any UK seniority claim for trade marks). Rights holders will have the option to opt out of this scheme, but this is likely to incur an official fee.
Existing EUTMs/RCDs will continue to be valid in EU27 only.
Nine-month "priority" period for owners of pending EUTM/RCD applications to apply in the UK for the same protection. These re-filed applications will retain the priority and seniority dates from the corresponding EU application.
For international trade mark registrations under the Madrid system designating the EU, a new UK equivalent right will be granted -- a "clone." However, this will be a national registration, not an IR designation.
* The UK has joined the "The Hague system" for designs: as of 13 June 2018 it is possible to designate the United Kingdom in an international design application at WIPO.
EU Trade mark Directive
The UK has fully implemented the EU trade mark Directive into national UK trade mark law.
The UK will continue to recognise EEA exhaustion post-Brexit. The EU has made no equivalent statement and is not expected to. The UK position on exhaustion is also expected to be temporary.
Existing unregistered Community Design rights will continue to be protected and enforceable in the UK for a term of protection at least equal to the remaining period of protection of the relevant Community right.
Creation of a new UK "supplementary unregistered design right" (SUD) which mirrors the characteristics of the unregistered Community Design. Designs disclosed in the UK after exit day will be protected in the UK, but not the EU. First disclosure in the EU will not establish protection in the UK, but it may destroy novelty in that design for the purposes of a later claim to UK unregistered rights.
Geographical indications (GIs)
All existing UK products registered under EU GI schemes will get UK GI status and remain protected in the UK.
A new UK GI scheme will be created, which will mirror the existing EU schemes and "fulfil the UK's WTO obligations", managed by the Department for Environment, Food and Rural Affairs. It’s not clear whether the EU will continue to protect UK GI products, and a separate EU application may be necessary. Producers of existing EU GIs may also need to apply to the relevant UK scheme to secure UK GI status.
* UK national patents and European patents -- via the European Patent Office -- are unaffected by Brexit since they are independent from EU membership.
* Supplementary protection certificates (SPCs) are a specific part of UK patent law that comes from EU law.
Granted SPCs will remain in effect in the UK after exit day. SPCs granted but not yet in force will come into force at the end of the associated patent term as normal. There will be no need to refile a pending SPC application at the IPO. However, where the underlying authorisation was granted by the European Medicines Agency, SPC holders may be asked to provide information on the equivalent UK authorisation in order to be registered on the UKIPO's Patent Register. Notably, the term of any new UK SPC will be calculated based on the earlier of a UK or EEA Marketing Authorisation.
The UK had previously indicated that it would explore whether it would be possible to remain within the UPC and UP system. However, this guidance has since been withdrawn. In any event, it's unclear whether it would be legally possible for the UK to remain within the system once it leaves the EU.
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. The UK has said that it has no plans to implement the controversial EU Copyright Directive, and that any future changes to the UK copyright framework will be considered as part of domestic policy.
Sui Generis Database rights*
*Sui generis database rights are an EU law creation, and post-Brexit a database created in the UK would no longer be protected.
Existing, UK originating sui generis database rights will no longer be enforceable in the EEA.
The UK has implemented the EU Trade Secrets Directive.