Intellectual Property Rights and Brexit - Practical Guide to Exit

After successive postponements, the United Kingdom will finally leave the European Union, popularly known as Brexit, with effect from 31 January 2020. It is therefore important to know what will become of the Intellectual Property assets filed and registered through EUIPO.

For that reason we have summarized a practical guide for this transitional period and the future of assets protected in the European Union.

TRADEMARKS

1. Transition period

On Exit Day, January 31 at 11 pm, UK time (12pm, Brussels time), European Union law regarding European Union trademarks will continue to be applied in the United Kingdom.

European Union law will thus be applied throughout the duration of the transition period which will end on December 31, 2020, i.e., the European Union trademarks will continue to have effect in the United Kingdom during the transition period.

2. The comparable UK Trademark

The transition period will end on 31 December 2020 and the UK Institute of Intellectual Property (IPO) will create a mirror mechanism that translates as a comparable (or corresponding) UK right.

Thus, at the end of the transition period, the UK IPO will create comparable UK trademarks for all EU registered trademarks. These will have no further costs to the applicant but an independent certificate of registration will not be issued.

These Trademarks Will:

• Have the same legal status in the UK as of those EUTM marks;
• Keep the original filing date of the comparable EUTM;
• Keep the original priority (or UK seniority) date;
• Be completely independent from the comparable EUTM;
• Have all details available online on GOV.UK.

3. Pending EUTM at the end of the transition period

The mechanism specified in 2. will be carried out automatically and is only available for trademarks granted until December 31, 2020.

However, if the European trademark is granted after 31 December 2020, there will be a period of nine (9) months to obtain a comparable mark in the United Kingdom.

As long as the application is identical to the European Union Trademark, the applicant must have the same rights as those mentioned above.

After asking for the corresponding right in the UK IPO, it will be examined in accordance with the law of that country.

The comparable trademark application in the UK will have associated costs:

Application for one trademark in one class of products/services

£ 170 (online) | £ 200 (on paper)

Additional Class

£ 50

4. Trademark Numbers

As previously mentioned, the comparable UK trademarks will keep the original filing date or priority date of the EUTM. But what will be of the application number?

The UK IPO has announced on their website that the trademark numbers coding will be simplified to ease the procedure even further.

EU Trademark Number                                                                            Comparable UK Trademark

        000000123                                                                                                     UK009000000123    

So, the formula shall be UK009 + Existing EUTM number.

5. Filing a non EUTM trademark in the transition period

For customers who wish to register a trademark in the United Kingdom during the transition period, special caution is required. If another applicant, owner of a previous European Union trademark, submits an identical application for a comparable United Kingdom trademark identical to yours, the latter will retain the European Union Trademark priority date and, to that effect, will take precedence over the identical trademark registered in the United Kingdom in that period, but before yours.

6. Not asking for or not wanting to maintain comparable UK right

It is possible to opt out of the comparable UK trademark. However opt out will not be possible if the trademark has been used in the UK and if it is licensed, assigned or the object of an agreement and if the applicant/owner have initiated a litigation procedure based on the comparable UK trademark.

7. Renewals

The fees for the renewal of a comparable trademark shall be due to the IPO separately. Since the comparable right is completely autonomous from the existing EUTM right, both marks shall have to be renewed.

8. The EUTM expires after January 1st 2021

When the comparable UK law expires 6 months after 1 January 2021, the UK IPO admits that it will not be able to send the respective in due time and therefore will allow the trademarks to be renewed, in a grace period of 6 months, from the date of receipt of the notice sent.

Any EUTM that expires after 1 January 2021 must be renewed directly with the UK IPO, otherwise it will cease to have effect in the British territory.

DESIGNS

1. Registered Community designs

Similar to trademarks, registered Community designs will continue to be in force in the United Kingdom throughout the transition period ending on 31 December 2020.

At the end of the transitional period, comparable duties will be created in the United Kingdom and in accordance with the withdrawal agreement. For applications pending on 31 December 2020, applicants will have an additional 9 months after the transition period to apply for the same protection as Community designs in the UK.

2. Unregistered designs

Nothing will change during the transition period and Unregistered Designs that appear before the end of the transition period will still be protected in the United Kingdom for the stipulated three-year period.

PATENTS

The patent system will not be affected by Brexit. The European Patent Office (EPO) is not an agency of the European Union, but of the European geographical space, which means that everything will remain unchanged after Brexit. Existing EU patents with protection in the UK, therefore, will not be affected by the exit.

In addition, all UK representatives qualified before the EPO will remain fit to represent.

COPYRIGHT

Copyright issues related to reciprocity between the UK and the European Union are the subject of several international treaties independent of the Union, which is why copyright has not been discussed in the withdrawal agreement and its situation will remain unchanged after January 31, 2020.