AFTER BREXIT – Information regarding your IP rights

Until the exit day, EU law will continue to apply to the UK — and EU rules will continue to be interpreted and applied consistently in the UK and EU. There will be no changes to EU trade mark and design applications, registrations, proceedings or the ability to act before the EUIPO prior to 31 December 2020.

New rules, however, will take effect on 1 January 2021.

We will keep you informed on these new rules in due course and advise you on possible action items, if necessary to ensure your IP rights. In the following, we would like to answer some of the most frequently asked questions concerning how BREXIT affects existing IP rights.

Does Brexit affect my patent protection in the UK or Europe?

The European Patent Organisation is not a body of the EU and therefore BREXIT does not affect European patents. Applicants can continue to apply to the European Patent Office for patent protection which will include the UK. Existing European patents and patent applications covering the UK are also unaffected.

How does Brexit affect my EU trade mark registrations?

The UK will remain part of the EU trade mark system throughout the implementation period that ends on 31 December 2020. EU Trade Marks (EUTM) will continue to extend to the UK during this time.

At the expiry of the implementation period on 31 December 2020, registered EU trade marks (EUTMs) will be immediately and automatically granted comparable trade mark rights in the UK. If you own an existing right, you do not need to do anything at this stage.

Where EUTM applications are still pending at the date of exit, the applicants will have the opportunity to refile national UK trade mark applications with the UK Intellectual Property Office (UKIPO) using the normal application process and official fees, but the UK Intellectual Property Office will recognise the original filing/priority/seniority dates of the original EUTM application.

That is, EUTMs which are pending on the exit day will not be automatically granted equivalent UK trade mark rights, but applicants will be able to:

• register a comparable UK trade mark within a time period of nine months after the exit day (31 December 2020);
• retain the earlier filing date of the pending EUTM;
• claim any valid international priority on the pending EU application, along with any UK seniority claims recorded against it.

In sum, businesses, organisations or individuals that have pending applications for a EUTM at the end of the transition period will have a period of nine months from the exit day to apply in the UK for the same protections. We will keep you informed of this deadline in a timely manner.

What will happen to my Registered Community Design registrations?

At the expiry of the implementation period on 31 December 2020, registered and published Community designs (RCDs), unregistered Community designs (UCDs), and protected international design registrations designating the EU will be immediately and automatically replaced by comparable UK rights. These rights will retain the filing, registration, priority and renewal dates of the Registered Community Designs. If you own an existing right, you do not need to do anything at this stage.

Where RCD applications are still pending at the date of exit, the applicants will have the opportunity to refile with the UK Intellectual Property Office (UKIPO) using the normal application process and official fees but the UKIPO will recognize the original filing/priority dates of the original RCD application.

Will there be a cost for the creation of any equivalent UK rights after Brexit?

There will be no official charge for the creation of equivalent rights for holders of registered EU trade marks (EUTMs) and Community Designs and the UK government has agreed to create these comparable rights as soon as practicable. However, there will be future costs to contend with, as comparable rights will need to be renewed in the UK separately from your EUTMs and separately from your Registered Community Designs (RCDs). This will be the case even if no deal is agreed between the UK and the EU.

Further information can be found at the following website:

gov.uk/government/news/intellectual-property-and-the-transition-period