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Brexit and IP Rights: Key steps to take before the end of the Transition Period

Posted on 06 November 2020

The end of the Brexit transition period on 31 December 2020 is approaching. Whilst discussions over a UK/EU free trade agreement continue, the position in relation to protection and enforcement of IP rights after 1 January 2021 is largely clear, and unlikely to change even if a trade deal is reached.  Particularly, rights holders can be reassured that their valuable IP rights will continue to be protected in the UK.

However, there are a number of steps to consider taking now as set out in this checklist.

Existing EU trade mark and design registrations

On 1 January 2021, the UK Intellectual Property Office (UKIPO) will create new comparable UK rights based on existing registered EU Trade Marks (EUTMs) and Registered Community Designs (RCDs), and on International Registrations designating the EU. In relation to International Registrations (IR), note that an independent UK right will be created, not a right within the IR regime (it will however be possible to replace the comparable UK right with an IR designation).  

The new registration will retain the same filing (priority) date and renewal date as the EUTM/RCD, and any claim to seniority.

There is therefore no need to re-file existing EUTM/RCD registrations in the UK.

Key steps to take in relation to these comparable UK rights include:
  • Check that the records at the EU Intellectual Property Office (EUIPO) are up to date, as these will be ported across to the UKIPO. Particularly make sure that ownership records are correct.
  • Budget for the extra rights that will be created in the UK, including additional renewals and potentially increased numbers of disputes.
  • Consider the impact on existing and planned portfolios. Whilst it will be possible to opt-out of a comparable UK right, this is likely to be of more relevance, at least initially, where there is a particular reason why the rights holder positively does not want to have the comparable UK right (e.g. because it might incur liability or be in breach of an agreement). Otherwise, we recommend maintaining the comparable UK right, even if it duplicates other UK protection, and taking the decision whether to abandon it at a particular trigger point (e.g. surrendering if it is challenged or letting it lapse on renewal). If opt-out is desired, ensure the requisite three months' notice is given to any affected party.
  • Notify licensees of the new comparable UK rights and take steps to register any relevant transactions at the UKIPO within 12 months of the end of the transition period.
  • Docket the numbering for the UK comparable rights (see table below). The newly created UK rights have been given new numbering to distinguish them from the existing convention for UK rights.

    Existing IP Right

    New UK IP Right

    Numbering of UK right

    Example: Existing Number of EU right Example: Number for New UK Right

    EUTM

    Comparable UKTM

    UK009 + the last 8 digits of the EUTM

    000000977

    UK00900000977

    International Registration (EU) – Trade Mark

    Comparable UKTM

    UK008 + the last 8 digits of the IR (EU)

    000025197

    UK00800025197

    RCD

    Comparable UK Design

    9 + the full RCD number

    004048098-0004

    90040480980004

    International Registration (EU) – Design

    Comparable UK Design

    8 + the full IR (EU) number

    D069640-0001

    806964000010000
     
  • ​Ensure robust clearance and watching processes are in place.
  • Consider whether to re-register the comparable UK right in territories such as Gibraltar and/or Jersey. An EUTM will no longer extend to Gibraltar after 1 January 2021, but it will be possible to re-register the comparable UK right in Gibraltar. Jersey unilaterally recognises EUTM protection and it is assumed it will continue to do so; again, the comparable UK right can be re-registered.
  • The new UK right will be renewable separately from the EU right, and the renewal dates should be docketed and budgeted for. Where the comparable UK right falls due for renewal in the first six months after the transition period, the UKIPO will send the renewal notice on the actual date of expiry, giving six months from that date to renew. It will not be possible to renew an EU right early and thereby avoid paying the renewal fee for the comparable UK right, which will remain payable.
  • Where an existing EUTM has only been used to date in the UK, consider what use can be made of the mark in the EU. However, the EUIPO has said that use in the UK before the end of the transition period can continue to qualify as use of the EUTM if it covers a relevant period of use. Similarly, consider whether an existing EUTM has only been used to date in the EU, and consider what use can be made of the mark in the UK. Again, however, the newly created UK mark will not be liable to revocation on the grounds that the corresponding EUTM has not been put into genuine use in the UK before the end of the transition period. Use of the EUTM in the EU (whether inside or outside the UK) before the end of the transition period will count as use of the newly created UK trade mark, if it was during the relevant period.
  • When assessing the reputation of a newly created UK mark, it will be possible to take into account reputation acquired in the EUTM in the EU before the end of the transition period. However, the EUIPO has said that reputation in the UK before the end of the transition period will not be relevant.

More Information:

EU trade mark protection and comparable UK trade marks

Changes to international trade mark registrations

Changes to EU and international designs and trade mark protection

EU and international designs: legal issues for rights holders

Changes to international EU protected designs

EU Commission Notice on trade marks and designs

EUIPO Brexit Q&A and Notices

WIPO Guidance on International Registrations

New trade mark and design applications – dual filings

From 1 January 2021, it will be necessary to file separate applications in the UK and the EU where protection is required in both territories.

When considering new applications, take into account the following:
  • Audit portfolio and filing strategies to identify any potential gaps in protection arising as a result of the use that has been made of any EU trade mark (e.g. is the use only in the UK or the EU?), and where UK rights have typically been relied upon as earlier rights in disputes before the EUIPO.
  • When conducting clearance searches after the end of the transition period, take into account that an application may be made at the UKIPO in the nine month window relying upon the priority date of an earlier EUTM application.
Where applications are being considered in the remaining days in the transition period:
  • For new trade mark applications where protection is wanted in both the EU and the UK, we advise dual filing in both territories now. Whilst, as explained below, there will be a period in which to file an application at the UKIPO after 1 January 2021 where there is a pending EUTM application (and to retain the priority date of the EU application), there are advantages in filing now, before significant numbers of cloned rights come onto the UK trade mark register.  
  • For new design applications where protection is desired in both the EU and the UK, dual filings should only be considered as we approach the end of the transition period, as an RCD can reach registration very quickly at the EUIPO.

Pending EU trade mark and design filings

It has been estimated that there will be around 85,000 pending EU trade mark applications at the EUIPO on 1 January 2021.

If an EU trade mark or design application (or an IR designating the EU) will still be pending at 31 December 2020, the following should be considered:
  • It will be possible to file an application at the UKIPO for the same right during a nine month window ending on 30 September 2021, and to retain the priority date of the EU application. A separate application fee will be payable. These deadlines should be docketed as the UKIPO will not notify applicants of the deadline. The UKIPO will examine the application in the usual way and so it could face objection and/or an opposition.
  • If an application is currently pending at the EUIPO and is still in its priority period, we recommend filing a UK application now, rather than waiting for the nine month window beginning on 1 January 2021.
  • Where publication of an RCD has been deferred, this will be treated as a pending application. Accordingly, an application should be made to the UKIPO within the nine month priority window after the end of the transition period. It will then be possible to defer publication of the UK registered design for up to 12 months (the application will not be subject to substantive examination), provided the overall deferment period does not extend beyond the total of 30 months.

Agreements relating to IP rights

New agreements should clearly set out what is intended in relation to the definition of the territory of the agreement, and the IP rights that are covered. For existing agreements, it may be possible to renegotiate certain aspects to ensure that they reflect the desired position.

The following specific issues should be considered:
  • The UK Government has said that agreements, licences or security interests that refer to an existing EUTM registration or RCD will also apply to the newly created UK right, but this is subject to contrary wording in the agreement. The governing law of the agreement may also be a relevant factor.
  • Whilst it is not necessary to record licences and security transactions at the UKIPO against the newly created UK right, there are advantages in doing so. Where the transaction has been registered at the EUIPO before the end of the transition period, there will be a 12-month period after the end of the transition period to register it at the UKIPO. 
  • Notify any licensees of the new comparable UK right and check that creation of the new right does not put you in breach of any agreement.
  • Ensure that any assignments of EU rights have been recorded at the EUIPO before the end of the transition period. Where they have not, the UKIPO will record the comparable UK right in the name of the assignor of the EU right. However, there will be a period of 12 months after the end of the transition period to resolve this.

Ongoing and planned disputes

Disputes at the EUIPO
  • Where an opposition is ongoing at the EUIPO and the applicant files a UK application during the nine month window, the opponent will need to consider bringing separate opposition proceedings at the UKIPO. The opponent should ensure it has a watch in place.
  • In opposition or cancellation actions against an EU right at the EUIPO, it will no longer be possible to rely upon earlier UK rights after 1 January 2021. The EUIPO has said that this will apply also in existing actions (although it is possible that this question may ultimately need to be resolved by the CJEU). Where ongoing disputes at the EUIPO are based solely on earlier UK rights, it would be advisable to seek to resolve them, if possible, before the end of the transition period.
  • Where cancellation actions in relation to an EU right are ongoing at the end of the transition period, either before the EUIPO or an EU Member State court, the UKIPO will 'honour' any final determination of invalidity and apply it to the comparable UK right created in relation to that EU right. This will not be the case however if the grounds for invalidity do not apply in the UK. Parties considering bringing a cancellation action (e.g. for invalidity/revocation on the grounds of lack of use) against an EU right may wish to do so before 31 December 2020, to avoid having to file two sets of proceedings (depending upon the grounds relied upon). See our briefing note for more details (the UKIPO will be issuing further guidance on the practical aspects).
Disputes at the UKIPO
  • Disputes before the UKIPO will continue on the basis of the existing law as it stands at 31 December 2020 (i.e., it will be possible in ongoing opposition and invalidity proceedings to continue to rely upon earlier EU trade mark registrations and applications as earlier rights).
  • There is likely to be an increased level of disputes at the UKIPO following the end of the transition period. It is worth noting that proceedings before the UKIPO and EUIPO have some marked differences. For example, contested hearings are more common at the UKIPO, and may feature disclosure, greater use of case management powers and cross-examination of witnesses.
Disputes before the UK and EU Member State Courts
  • Review any ongoing disputes before the UK courts relating to EU rights. The existing regime for UK/EU cross-border disputes relating to jurisdiction, enforcement and service will continue to apply in relation to disputes commenced before 31 December 2020. There will therefore be advantages in appropriate cases in issuing proceedings before that date.
Dealing with counterfeits
  • From 1 January 2021, separate Applications for Action (AFA) will be needed for Customs enforcement in the EU and UK.
  • Where an EU-wide AFA has previously been filed in the UK, it will remain valid in the UK but will no longer be valid in the EU, and so an application should be submitted through an EU Customs Authority.
  • If a rights holder has filed an EU-wide AFA via one of the EU Customs Authorities covering the UK, this will cease to have effect in the UK after the end of the transition period but will remain valid in the EU Member States designated. A separate application should be filed with UK Border Force.

More information:

EU Commission Notice on Customs enforcement

Parallel trade

Parallel imports are genuine products put on the market in one country by the trade mark owner, but then exported to another country without its permission. Currently, when the trade mark owner puts the goods on the market anywhere in the EEA, it loses the ability to object (other than in exceptional circumstances) to them being exported to any other EEA country – its IP rights are said to be "exhausted".

The following issues should be considered:
  • IP rights that have been exhausted in the UK and the EU before 31 December 2020 will remain exhausted in both territories.
  • The UK will unilaterally maintain EEA-exhaustion for imports into the UK of goods put on the market in the EEA. Nothing will therefore change in relation to such imports, at least in the short term.
  • However, for goods placed on the market in the UK, the EEA-exhaustion regime will not apply and so it may be necessary to seek consent from a rights holder to export such goods to the EEA as the relevant rights will not be exhausted.

More information:

Exhaustion of IP rights and parallel trade

EU Commission Notice on exhaustion of IP rights

.eu domain names

Details
  • Entities established in the UK and non-EU citizens residing in the UK will not be able to hold, register or renew .eu domain names from 1 January 2021. Relevant domains will be withdrawn on 1 January 2021 and cannot be used for emails/websites; from 1 January 2022, they will become available for others to register.
  • Consider placing ownership of such domains in EU established entities where possible. Alternative domains may also need to be considered.

More information:

.eu domain names

EU Commission Notice on .eu domain names

EURid Brexit Notice

Representation

Details
  • We have set up Mishcon de Reya IP B.V., a trade mark practice based in The Netherlands. Mishcon de Reya IP B.V. is a wholly owned subsidiary of Mishcon de Reya LLP and will allow us to ensure continued representation in relation to EU Trade Mark (EUTM) and Design matters before the EU Intellectual Property Office (EUIPO). 
  • Where an EEA representative is recorded against an EU right at the EUIPO, this information will be added to the register at the UKIPO. Such representatives will be able to remain an address for service in relation to comparable UK rights at the UKIPO for three years. However, the UKIPO is currently consulting on requirements for address for service in relation to new applications and new disputes.

Unregistered design protection

Details
  • Existing Unregistered Community Designs (UCDs) will remain protected in the UK for the remainder of their term of protection (up to three years) after the end of the transition period. This will be the case regardless of whether the design was first disclosed in the UK or the EU. Due to the lack of reciprocity in relation to the first disclosure requirement after 1 January 2021 (as explained below), disclose any relevant designs in either the UK or EU before the end of the transition period where possible.
  • On 1 January 2021, a new UK unregistered design right called the 'supplementary unregistered design right' (SUDR) will be created. SUDR will mirror the characteristics of the UCD. However, due to uncertainties over the rules of first disclosure for both UCD and SUDR, designers face a gap in protection. A design first disclosed in the EU will not qualify for SUDR (and may destroy novelty in the design in the UK); similarly, a design first disclosed in the UK may not qualify for UCD (and may destroy novelty in the design in the EU).
  • There are no easy answers for designers and they should consider carefully their key markets. Options include filing for registered design protection in the EU and/or the UK; making a simultaneous disclosure in the UK and EU (though this is untested); and relying upon other rights where available, such as copyright and unfair competition.
  • UK design right (which protects 3D designs) remains available but the qualifying criteria will change on 1 January 2021 and so an EU designer will no longer qualify, unless the design is first marketed in the UK or a qualifying country.

More information:

Changes to unregistered designs

Other IP rights

This guidance note does not deal in detail with other rights but as a brief overview:

Patents
  • The existing system for protecting and enforcing patents will remain unchanged, as it is based on the UK's membership of the European Patent Convention (i.e. separate from the EU). The UK will introduce its own mechanism in respect of Supplementary Protection Certificates (SPCs), including an SPC manufacturing waiver. One important aspect is that the term of any new UK SPC will be calculated based on the earlier date of an EU or UK marketing authorisation. The UK will not participate in the Unified Patent Court and Unitary Patent regime.

Further information:

Changes to SPC and patent law

EU Commission Notice on SPCs

Copyright
  • Copyright law will remain largely unchanged immediately post-Brexit, though there will be changes in relation to aspects of cross-border protection and enforcement of copyright, for example, in relation to portability of content and broadcasting. There may, over time, be divergence, for example, EU Member States have until 7 June 2021 to implement the controversial Directive on Copyright in the Digital Single Market (which the UK will not be implementing).

Further information:

Changes to copyright law

EU Commission Notice on copyright and related rights

Database rights
  • Database rights created before the end of the transition period will continue to be protected for the remainder of their duration in both the UK and EU. However, new database rights will be limited in the UK to UK citizens, residents and businesses; and new database rights in the EU will not be available to UK citizens, residents and businesses. Such databases may need to be protected through contractual arrangements.

Further information:

Sui generis database rights

Geographical Indications
  • The UK will set up its own geographical indication (GI) schemes for food, drink and agricultural products; spirits; wine; and aromatised wine, with new UK GI logos for those products protected under the UK schemes. From 1 January 2021, producers will need to apply to the UK scheme to protect a new product name in Great Britain (GB) (England, Scotland, Wales), and to the EU scheme to protect a new product name in the EU and Northern Ireland. Producers or retailers of food and agricultural GI products produced and for sale in GB and registered before 1 January 2021, will have until 1 January 2024 to change packaging and marketing materials to display the new UK logos. GB GI products that are protected in the EU can continue to use the EU logo in the UK, in addition to the UK logo, after the transition period.
  • UK GIs registered under the EU GI schemes by the end of the transition period will continue to receive protection in the EU, but all new GB products will need to obtain UK GI protection first before securing EU GI protection. There may be further developments in relation to GI protection as part of discussions relating to free trade arrangements, both with the EU, and with other countries like the USA.

More information:

Changes to geographical indications

EU Commission Notice on geographical indications

 

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