How to get ready for changes to your EU IP rights post-Brexit

With the end of the Brexit transition period just only a couple of weeks away, businesses should already be considering whether they are ready for the changes that will affect their intellectual property rights.

On 1 January 2021, the holders of almost 1.4 million EU trade marks and 700,000 EU designs will automatically receive comparable UK rights. However, there are actions that one should be taking now, and they are considered in more detail below.

 

EU and UK Trade Marks

From 1 January 2021, EU trade marks (EUTM) will no longer protect trade marks in the UK. However, holders of registered EUTMs will automatically receive from the UK Intellectual Property Office (UKIPO) corresponding UK trade marks (UKTMs). These corresponding UKTMs will have the same filing and priority dates as the original EUTM mark and no additional costs will be incurred.

However, the UKIPO will only create a comparable UKTM for EUTMs registered before 1 January 2021. This will have a significant impact on any EUTM applications which are still pending at the end of the transition period. For those marks, if the applicant of a pending EUTM wishes to also register a trade mark in the UK, they will have to apply to do so by 30 September 2021.  The comparable UKTM will retain the earlier filing date of the pending EUTM and the applicant will be able to claim any valid international priority they had on the pending EU application.

 

Trade Mark Representatives

From 1 January 2021, UK attorneys will no longer be able to represent clients who hold UKTMs before the EU Intellectual Property Office (EUIPO). This means that new applications or new proceedings will require an attorney from the European Economic Area (EEA) to be represent them.

For cases which are ongoing at the end of the transition period, UK attorneys can continue to represent their clients before the EUIPO.

If you require an attorney from the EEA to represent you before the EUIPO, then please get in contact as our International Commercial Law Alliance (ICLA) members will be happy to assist.

 

Designs and Models

UK national design registrations will be unaffected by Brexit. However, Registered and Unregistered Community Design rights are governed by an EU regulation. The position with these rights is similar to that of trade marks. The holder of a Registered Community Design (RCD) that has been registered by the end of the transition period shall be automatically granted an equivalent UK national registered design for the same design and will keep the original filing and priority date.

As with trade marks, if the applicant of a pending RCD wishes to also register its design in the UK, they will have until 30 September 2020 to apply in the UK for the same protection.

Holders of unregistered community designs arising before 1 January 2021 shall automatically become the holders of an equivalent UK right with the same protections and will continue to be protected in the UK for the remainder of its term.

From 1 January 2021, a supplementary unregistered design (SUD) will be available in UK law only and will provide similar protection to current unregistered designs. This will be established at first disclosure in the UK (or another qualifying country).   It should be noted though that first disclosure in the EU will not establish a SUD right and doing so could destroy the novelty of the design should one later wish to assert a UK unregistered design right. To ensure then that a business has adequate protection in the UK, one will need to consider carefully the disclosure of the relevant products into the market.

 

Copyright 

As copyright is a national right provided separately by each country, there will not be substantial changes to UK copyright law from 1 January 2021.

However, a large part of UK copyright law is derived from the EU copyright framework. As a result, there are references in UK law to the EU, the EEA and member states. To address this, the UKIPO has introduced regulations under the powers of the European Union (Withdrawal) Act 2019 to remove or correct references to the EU, EEA or member states in UK copyright legislation.

Cross-border copyright arrangements will continue to apply to the UK and any database rights that exist in the EU and UK at the end of the transition period will continue to be recognised in both territories for the remainder of their term.

 

Exporting IP-protected Goods

If your business exports goods to the EEA protected by intellectual property rights, it is unlikely that you currently require the rights holder’s permission to export those goods. However, after 1 January 2021, you may need the rights holder’s permission to continue (exporting their goods). Therefore, business arrangements and contracts should be reviewed, and discussions held with the IP rights holder.

 

Why Does This Matter?

The UK’s exit from the EU is just one month away and businesses should act now to ensure they are adequately protected and prepared for the changes that will take effect from 1 January 2021 onwards.  If you would like to discuss any IP issues that your business might be facing, then please contact George Duncan at george.duncan@ilaw.co.uk.