Brexit Update: The Impact on Intellectual Property Rights

The choice between “Leave” and “Remain” seemed very simple, but as demonstrated by the three and a half years that it took to negotiate an exit, getting on with Brexit is proving to be very complicated.  Moreover, swashbuckling for Global Britain as the Brexiteers promised is almost impossible when everyone is wrapped up in red tape.  The inevitable consequences of erecting barriers to trade by leaving the EU is not frictionless borders, but friction and delay.  It will likely take a number of years for full implications of Britain’s decision to be fully understood. While also complicated, the impact of Brexit on Intellectual Property rights is settled. Here are the principal points:

Trademarks

Issued Community Trademark registrations cloned onto the United Kingdom register, but applications must be refiled, and some action may also be required for upcoming renewals and for contested proceedings.

Issued EUTM’s automatically cloned

Issued Community Trademarks (EUTM’s) are automatically cloned as Comparable UK Trademark Registrations on the United Kingdom Trade Mark Register.  They continue to use the EUTM registration numbers preceded by the prefix “UK009.”  International Registrations (IR’s) designating the EUTM are identified on the United Kingdom register using the prefix “UK008.”  An address for service within the United Kingdom must be assigned by 1 January 2024, however, for those derived from EUTM IR’s a United Kingdom address for service must identified immediately.  IpHorgan will attend to these details at no cost to our clients. For those EUTM’s currently with an address for service within the United Kingdom, a new EU address must also be listed.  IpHorgan will attend to this on behalf of any affected marks on its records.

Pending EUTM’s will need to be refiled

For pending EUTM’s not registered as of 31 December 2020, they need to be refiled as pending applications before the end of September 2021.  National filing fees apply.  These refilings retain the priority and all other details of the parent EUTM.  An address for service within the United Kingdom must be designated.  IpHorgan will be communicating with its clients concerning the available options over the coming weeks.

EUTM Renewals with Due Dates After 31 December 2020

Comparable UK Trademark Registrations with due dates after 31 December 2020 have to be renewed separately in the United Kingdom. Early payment of the EUTM renewal fee before 31 December 2020 will not renew the Comparable United Kingdom rights.   IpHorgan will alert its clients to rights affected by this wrinkle.

Pending Oppositions and Cancelations

A cancelation against a EUTM based on an existing EUTM is not be affected by Brexit and continue as before. If the EUTM is canceled after 31 December 2020, the comparable UK Trademark Registration will also be canceled. Oppositions against EUTM’s still pending as of 31 December 2020 continue against the comparable UK Trademark rights provided that within two months the plaintiff submits an equivalent United Kingdom right as the basis for its challenge. Oppositions and cancelations against EUTM’s still pending as of 31 December 2020 and based on a United Kingdom trade mark are terminated because the United Kingdom trade mark no longer has force within the EU.  These proceedings will have to be recommenced based on a relevant EU right.

Designs

Most Registered Community Designs continue to be effective in the United Kingdom, but unpublished Design have to be refiled.

Published Community Designs Automatically Cloned

Published Registered Community Designs (RCD’s) are automatically cloned as Comparable UK Design registrations on the United Kingdom Design Register.  They continue to use the RCD registration number preceded by the prefix “9.”  An address for service within the United Kingdom must be designated by 1 January 2024. IpHorgan will attend to these details at no cost to our clients. For those RCD’s currently with an address for service within the United Kingdom, a new EU address must be designated.  IpHorgan will attend to this on behalf of its clients.

Pending European Design’s and Deferred Publication Designs will need to be refiled

Pending European Design’s of 31 December 2020 must be refiled as Comparable United Kingdom applications before the end of September 2021.  They will retain the priority and all other details of the parent European Design. Similarly for European Design were publication has been deferred.  These are design applications where the owners have elected to keep details confidential for up to 30 months after grant. Where still unpublished by the end of 31 December 2020, these Designs must be refiled if United Kingdom protection is to continue. For all Comparable Designs, an address for service within the United Kingdom must be designated and IpHorgan will handle this as part of the refiling process.

RCD Renewals with Due Dates After 31 December 2020

RCD’s must be renewed every five years and Comparable UK Design Registrations for RCD’s with due dates after 31 December 2020 have to be renewed separately in the United Kingdom.  Early payment of the RCD renewal fee before 31 December 2020 will not renew the Comparable United Kingdom rights.  IpHorgan will alert its clients to rights affected by this wrinkle.

Patents

Brexit has no impact on patent rights or on patent prosecution. Utility patent rights are not affected by Brexit.  Patent rights remain national and continue to be governed by national law. As well, the United Kingdom remains a member of the European Patent and Brexit has no impact on filings or grants Organization administered through the EPO. Although intended to enter into force in 2022, the Unitary Patent System proposed to cover all present European Union member states has not yet be ratified by all necessary members and is not yet effective.