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Brexit and IP Rights

Posted on 26 January 2021

The UK left the EU on 31 January 2020 and the transition period ended on 31 December 2020. Whilst the Trade and Cooperation Agreement reached on Christmas Eve between the UK and EU contains a number of commitments in relation to protection and enforcement of IP rights (read more on the TCA and IP rights here), the Brexit Withdrawal Agreement had already ensured the continued protection of valuable IP portfolios through a number of important provisions.

Our Brexit hub number of updates in relation to the impact of Brexit on future protection and enforcement of IP rights, including our short animation outlining important steps to take now, as well as our Mishcon Academy Digital session on the protection of trade marks and designs and our podcast on how to minimise disruption to IP portfolios.

Brand owners should note the following key points:

  • It is now necessary to consider separate protection for new trade marks and designs in the EU and in the UK.
  • At the UKIPO, it is now necessary to have a UK (or Gibraltar or Channel Islands) address for service when filing a UK application or for new contentious matters.
  • Existing EU trade mark and design registrations, and International Registrations designating the EU, were automatically converted into a comparable UK right by the UK Intellectual Property Office on 1 January 2021. These UK rights must be renewed separately from the EU right.
  • Existing EU unregistered designs and database rights as at 31 December 2020 continue to be protected in the UK for the remainder of their term of protection. From 1 January 2021, the UK has created a new form of unregistered design protection to replicate the existing EU regime (Supplementary Unregistered Design Right). However, there are a number of factors to take into account in relation to first disclosure of designs, which require careful consideration.
  • Where an application for an EU trade mark or design was pending at the EUIPO on 31 December 2020, those applications have not been carried across to the UKIPO. However, it is possible to file a UK application for the same trade mark or design in the UK, and claim the same priority/filing date as the EU application. Such applications must be filed by 30 September 2021. 
  • There will be minimal divergence in relation to IP laws, at least initially. This is due to the UK's continued membership of international IP conventions, the provisions in the UK/EU Trade and Co-Operation Agreement, and as the UK has retained existing EU IP laws. However, there have been some changes to IP laws to deal with certain cross-border EU aspects of IP, e.g., in relation to copyright.
  • Enforcement of IP rights in relation to parallel imports into the UK from the EEA, and vice versa – consent will be required from a rights owner to export goods placed on the UK market to the EEA, but not in relation to goods placed on the EEA market which are imported into the UK. The UK will be considering the long term position for parallel imports in early 2021 and will issue a public consultation.
  • Cross-border counterfeit trade - the necessary arrangements must be in place with both EU and UK customs authorities.

Our Brexit and IP Checklist has more information on the impact of Brexit on trade marks, designs and copyright and steps for IP owners to consider.

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