The United Kingdom formally left the EU on 31 January 2020. A transition period is now in place until 31 December 2020 (with the possibility that this may be extended). During this transition period nothing for IP changes in practice and it will be business as usual. EU law will continue to operate as it does now in the UK and the Intellectual Property system will continue as it is until 31 December 2020.
The UK Government and the EU have agreed a Withdrawal Agreement which includes proposed provisions for dealing with IP rights. Here we answer some of the key questions around your IP rights based on the provisions in the Withdrawal Agreement and explain what happens as we move past the transition period.
How do I file trade marks during the transition period?
It will be business as usual for EU Trade Marks (EUTMs) until the transition period ends on 31 December 2020. Trade marks can be filed at the EUIPO and will be effective in all 27 member states of the EU, plus the UK.
What will happen to my trade marks after the transition period?
Holders of EUTMs, at the end of the transition period will be given a fully equivalent UK right at no official cost and no forms will need to be filed. This means that if you own 10 EUTMs on the day of exit, on the day after you will own 10 UK registrations plus 10 EU registrations (covering the remaining 27 member states). The UK registrations will retain the original filing, priority and seniority dates and the first renewal dates will be the same as the original EU registrations. If the EU right is subsequently revoked due to a procedure which is pending at the end of the transition period, then the equivalent UK right will also be revoked (as long as the grounds for revocation apply in the UK). A UK address for service will not be required for the equivalent UK right for at least three years after the end of the transition period.
What happens if my trade mark is pending at the end of the transition period?
Applicants for EUTMs that are pending at the end of the transition period will have 9 months to reapply for the equivalent UK rights. The usual fees and forms will be required, but the original filing, priority and seniority dates will all be retained. To assist with this, Mewburn Ellis is offering to waive our service fees to re-file pending EU trade mark applications. Learn more.
What if I haven’t used the trade mark recently?
Genuine use of an EUTM in the EU27 countries will be recognised to support the validity of the “cloned” UK registration, so even if a registration has not been used in the UK for more than 5 years before exit day, the new UK registration will not automatically be vulnerable to cancellation for non-use. Use of an EUTM in the UK before exit day will also be valid to help defend a non-use cancellation action against the remaining EU registration.
How will these new UK rights be identified?
The UKIPO has confirmed that all EUTMs for which an equivalent UK right is generated post-Brexit will be listed with a “UK0009” prefix, to identify these rights from existing UK registrations and enable a clear link to the “parent” EU registration.
What happens to international trade marks?
The UK will take measures to ensure continued protection in the UK of international trade marks. This means that UK designations should be created automatically on exit day, again with no forms and no fees needed.
It will still be possible to file under the Madrid System for International trade mark registrations designating the UK.
Should I file in both the UK and the EU now?
Until now we have not recommended that clients double file for both UK and EU registrations unless there were specific reasons to do so, such as potential EU oppositions, or a need for a swift UK registration. This was because most EUTM applications proceed to registration within 6 months. However, we cannot now guarantee that EUTM applications filed from today will be registered by 31st December 2020. If they are not registered by that date, they will not be “cloned” and no equivalent UK right will issue automatically.
Therefore, we now recommend that all clients seeking protection for their trade marks in the UK file a UK application as well as an EU application. This will ensure that the UK application progresses at the same time as the EU application. To assist those who are interested in obtaining the security offered by UK trade mark rights alongside EUTM protection, we are offering a 50% reduction to our usual service charges for filing a UK trade mark when instructed alongside an EU trade mark. Find out more.
Is there any other action I need to take at this time during the transition period?
To ensure you are fully prepared you should:
- Consider renewing all UK trade mark registrations where there are equivalent EU registrations, rather than claiming seniority and allowing them to lapse.
- Review ongoing EU trade mark opposition and invalidation proceedings because, if they are based solely on a UK right, the EUIPO has indicated that the proceedings will be dismissed as of the withdrawal date.
- Anti-counterfeiting programmes should be reviewed, particularly the filing of customs notifications in the EU and the UK.
- Check commercial agreements such as co-existence agreements as any references to the EU in relation to territory, governing law and jurisdiction may need to be revised to specifically include the UK.
- Assess whether your management system will cope with the new numbering systems and the potential for double the number of renewals.
- Ask your current UK representatives if they have in place measures to ensure they can continue to act before the EUIPO after Brexit.
How do I file designs during the transition period?
It will be business as usual for Registered Community Designs (RCDs) until the transition period ends on 31 December 2020. Designs can be filed at the EUIPO and will be effective in all 27 member states of the EU, plus the UK.
What happens to already registered community designs after the transition period?
Existing registered community designs at the end of the transition period will give rise automatically to a fully equivalent UK right (with the same priority/filing date). The equivalent right will get a number which is the full 13 digit RCD number prefixed with 9.
What happens to pending RCD applications after the transition period?
Any pending RCD applications at the end of the transition period will not automatically have an equivalent UK right created. There will be a 9 month window to refile in the UK (paying the usual UK application fees) – such applications will be given the same application and priority date as the RCD application.
Most RCD applications are only pending for a short period of time (less than a week), if they are filed with all the necessary information and publication is not deferred – therefore with careful planning, most cases will not need to be refiled in the UK.
What happens to registered but not yet published designs (with deferred publication) after the transition period?
These applications will be treated as being pending, and so will need to be refiled in the UK (see above). Closer to the end of the transition period, it is worth considering requesting publication on such designs to avoid having to refile in the UK.
What happens about renewal fees after the transition period?
The fully equivalent UK right derived from the RCD will need to be maintained separately. The length of protection is the same.
What happens to international designs after the transition period?
When the transition period ends, we currently expect that existing international designs will give rise automatically to a fully equivalent UK right (with the same priority/filing date) outside the Hague system. However, discussions on whether the UK right can be maintained within the Hague system are ongoing.
What happens to unregistered community designs after the transition period?
A ‘continuing Community unregistered design’ will be created with the same details and expiry date. After the end of the transition period, designs first disclosed in the UK will be subject to a supplementary unregistered design, with the same term and scope of protection as previous unregistered Community designs, but only in the UK. Designs first disclosed in the EU will be subject to Community unregistered design, but only in the EU and not in the UK.
Are patents affected by the UK leaving the EU?
No, the existing European patent system will be unaffected by the UK leaving the EU, so no action by patent holders is needed.
Will the way I apply for a patent change at all now the UK has left the EU?
The patent application system hasn’t changed and won’t change after the transition period ends – you’ll still be able to use either the national route in the UK or the European route via the European Patent Office (EPO) to seek protection for inventions in the UK. The EPO is not an EU institution, and the UK will remain one of its 38 member states.
You’ll still be able to designate both the UK and Europe when making international patent applications via the Patent Cooperation Treaty (PCT) system. This means that patent protection will still be available using the PCT system in the UK via the national and EPO routes.
Will my current UK based European patent attorneys still be able to represent me at the EPO?
Yes, UK-based European patent attorneys will still be able to represent their clients at the EPO. Mewburn Ellis has worked with the EPO since it was founded in 1977 and has made a significant contribution to the development and application of European patent law and practice ever since. We continue to build on this experience, and our large team of European Patent Attorneys will continue working with you to protect your innovations using European and International patent applications.
Will the UK remain within the UPC system post-Brexit?
We are still waiting for the Unitary Patent (UP) and related Unified Patent Court (UPC) system to be implemented. The UK Government has announced that it will not participate in the UP and UPC, which means any unitary patent will not cover the UK. However, UK based European Patent Attorneys (along with those in our Munich office) will still be able to represent clients in the UPC.
How do I file Community Plant Variety Rights (CPVR) during the transition period?
During the Transition Period it will be business as usual for CPVRs before the CPVO. CPVRs will be able to be filed at the CPVO by the same people who can currently file Community Plant Variety Rights at the CPVO and they will be effective in all 27 Member States of the EU plus the UK.
What happens to CPVRs at the end of the transition period?
CPVRs granted two months before the end of the Transition Period, will be protected under UK law becoming UK Plant Variety Rights.
What happens to pending CPVRs at the end of the transition period?
If your application is still pending or the rights have been granted less than two months before the end of the Transition Period, you will need to apply to the Animal and Plant Health Agency (APHA) for rights to protect the variety in the UK. This is due to the EU having a two-month appeal period and APHA cannot protect varieties in the UK which might be subject to an appeal.
Navigating the Brexit landscape with you
In order to help you manage your intellectual property with confidence we are waiving our service fees when you re-file pending EU trade mark applications into UK trade mark applications. Find out more here. We will keep our offer open until the end of the transitional period on 31 December 2020. You don't need to do anything now other than register your interest in this offer.
Also, to assist those who are interested in obtaining the security offered by UK trade mark rights alongside EUTM protection, we are offering a 50% reduction to our usual service charges for filing a UK trade mark when instructed alongside an EU trade mark. Find out more.
If you would like further advice, please contact us.
This information is simplified and must not be taken as a definitive statement of the law or practice.