Many intellectual property rights holders have taken advantage of the EU-wide protection regimes available for protecting their valuable trade marks and designs. Going forward, where businesses and individuals want protection for a trade mark or a design, they will now need to consider seeking protection separately in the EU and in the UK.
However, steps have been taken to ensure that existing IP rights are preserved in the UK:
- 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 continue to be protected in the UK for the remainder of their term of protection, and the UK has created a new form of unregistered design protection to replicate the existing EU regime.
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. Further, and importantly, the UK's departure from the EU has had no effect on the regime for protection and enforcement of European Patents in the UK, as this stems from the UK's membership of the European Patent Convention, which stands separate from the EU. However, there have been some changes to existing UK IP laws to deal with certain cross-border EU aspects of IP, particularly relating to copyright, and Supplementary Protection Certificates.
Rights holders 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. Issues to consider include:
- Implications of the creation of new comparable UK trade marks and designs, e.g., in relation to portfolio management, and on existing and future agreements, and on disputes (both before the EU and UK Intellectual Property Offices, and the Courts).
- Ensuring they have dual protection in the UK and EU across all relevant IP rights and regularly review the use made of their 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, 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.
- 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.
- Dealing with cross-border counterfeit trade, where the necessary arrangements must be in place with both EU and UK customs authorities.
For more information, and guidance on the impact of Brexit on IP rights, please see our Brexit and IP Checklist.
Our trade mark practice in The Netherlands, Mishcon de Reya IP B.V., represents our clients in EU Trade Mark and Design matters before the European Intellectual Property Office.
Intellectual Property and Brexit
Brexit has involved disruption for many businesses. Mishcon de Reya can help you ensure the optimum protection of your valuable brand portfolio. Our animation below explains the impact on existing EU trade marks and designs at the end of the transition period, new rights, and steps to take now.