Intellectual Property

Posted on 12 April 2021

*Speed read – this two minute animation explains the impact of Brexit on existing EU trade marks and designs from 1 January 2021, new rights, and steps to take now.

Many individuals and organisations working in or in connection with sport took advantage of the EU-wide protection regimes available for protecting their valuable brands via a trade mark or a design. Now, they need to obtain protection separately in the EU and in the UK.

Existing IP rights:

  • Existing EU trade mark and design registrations, and International Registrations designating the EU, were automatically converted into comparable UK rights by the UK Intellectual Property Office on 1 January 2021. Rights holders must renew these UK rights separately from the EU right.
  • EU unregistered designs and database rights that were in existence at 31 December 2020 continue to be protected in the UK for the remainder of their term of protection.

Issues to consider include:

  • Rights holders in sports businesses should be alive to the impact on their existing and planned IP portfolios, related agreements, and ongoing/potential disputes, to ensure that their portfolios continue to be robust and well-protected. Particular issues to consider include:
  • Implications of the creation of new comparable UK trade marks and designs – for example, in relation to portfolio management, on existing and future agreements, and on disputes (at both the EU and UK Intellectual Property Offices, and the Courts).
  • Ensuring dual protection is in place in both the UK and EU across all relevant IP rights, with regular reviews of the use made of marks in both territories.
  • Where an application for an EU trade mark or design was pending at the EU Intellectual Property Office on 31 December 2020, a UK application for the same trade mark or design in the UK filed before 30 September 2021 can claim the same priority/filing date as the EU application. It is important to diarise this deadline and make sure relevant UK applications are filed before that date.
  • The UK has created a new form of unregistered design protection to replicate the existing EU regime but care must be taken over where designs are first disclosed as this may impact on where they are protected.
  • Dealing with cross-border counterfeit trade, where the necessary arrangements must be in place with both EU and UK customs authorities. The UK Government will shortly be consulting on parallel trade and exhaustion of IP rights.

We are already aware of major sports organisations (including top level clubs) in the first 100 days filing trade marks and designs in both the UK and the EU to cover both jurisdictions.  We have also seen a number of organisations take advantage of the rule that allows a new UK application filed before 30 September 2021 to claim the same filing date as an EU equivalent that was pending on 31 December 2021. Given the abundance of new UK rights that have been created, there has naturally been an increase in the number of requests, particularly from European based organisations, to manage their new UK trade marks and designs that were cloned from EU registrations and go on record as representative for those rights.

For more detail on the impact of Brexit on protection and enforcement of intellectual property rights, read our checklist and our review of the IP provisions in the TCA.

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