Intellectual property

Posted on 24 June 2021

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

Many retailers have taken advantage in recent years 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:

On 1 January 2021, the UK Intellectual Property Office automatically converted existing EU trade mark and design registrations, and International Registrations designating the EU, into comparable UK rights. Rights holders must renew these UK rights separately from the EU right, and so should budget for the increased costs (including potentially related to additional disputes).

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 for retailers to consider:

Retailers should be alive to the impact of Brexit 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 order to ensure rights can be maintained in both territories going forward.
  • Where an application for an EU trade mark or design was pending at the EUIPO on 31 December 2020, this will not have been converted into a UK right. However, if an application for the same trade mark or design is filed at the UKIPO before 30 September 2021, it 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 EU unregistered design, called 'Supplementary Unregistered Design Right'. However, due to uncertainties over the rules of first disclosure for both the UK and EU regimes, designers face a potential gap in protection if they want to rely upon unregistered rights across both territories. There are no easy answers for designers: they should consider carefully their key markets, and take advice as to which form of protection may be most suitable, and where their designs should be first disclosed. Options include filing for registered design protection in one territory and relying upon unregistered rights in the other (making use, as appropriate, of the 12 month grace period for test marketing a design); making a simultaneous disclosure in the UK and EU (albeit this is untested); and relying upon other rights where available, such as copyright and unfair competition/passing off.
  • Parallel trade: The rules around parallel imports between the UK and EU and vice versa are (currently) no longer consistent. When, for example, a trade mark owner puts goods bearing the mark on the market anywhere in the EEA, it cannot object (other than in exceptional circumstances) to those goods being imported into the UK, as the UK has unilaterally maintained the EEA-exhaustion of IP rights regime, at least for now. However, where a trade mark owner puts goods bearing an EU mark on the market in the UK, the EEA-exhaustion regime no longer applies and so it may be necessary to seek consent from a rights holder to export the relevant goods to the EEA as the rights will not have been exhausted. The Government has recently issued a consultation on the future exhaustion regime for the UK which will be of considerable interest for retailers. We consider the potential options being considered in this briefing.
  • Cross-border counterfeit trade: necessary arrangements must now be put in place separately with EU and UK customs authorities.
  • Copyright law has remained largely unchanged post-Brexit but, over time, we may expect to see divergence – for example, in the approach of the UK and EU courts to questions relating to protection of functional designs through copyright. The EU is also currently consulting on changes to its registered and unregistered design regime, which may lead to a further divergence with the UK.

Many retailers have taken steps to file trade marks and designs in both the UK and the EU to cover both jurisdictions. We have also seen a number take advantage of the rule that allows a UK application filed before 30 September 2021 to claim the same filing date as an EU equivalent application that was pending on 31 December 2020. The deadline of 30 September 2021 is fast approaching and should not be missed.

Given the abundance of new UK rights that have been created, there has also 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 new UK trade mark and design applications, or new disputes before the UKIPO, it is now necessary to have a UK address for service.

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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