Update: Impact of Brexit on Intellectual Property Rights30.01.2020 |
Ahead of 1 February 2020, the day on which the UK will leave the EU in accordance with the Withdrawal Agreement concluded between the EU and the UK, we updated our information about the impact of Brexit on intellectual property rights and added some practical suggestions.
The Withdrawal Agreement stipulates that during a transition period that will last until 31 December 2020, EU law remains applicable to and in the UK. This extends to the European Union Trademarks (EUTM) and Registered Community Designs (RCD) Regulations and their implementing instruments.
This continued application of the EUTM Regulations and the RCD Regulations during the transition period includes, in particular, all substantive and procedural provisions as well as the rules concerning representation in proceedings before the EUIPO.
The following applies in particular:
1. EUTM and RCD
Existing & pending EU rights
No rights will be lost as a result of Brexit. Holders of EUTM and RCD which are granted and published before the end of the Transition Period will be granted equivalent UK registrations automatically.
Holders of International Registrations designating the EU under the Madrid (trade marks) or Hague (designs) systems will also be granted equivalent UK registrations.
The UK IPO has agreed not to charge any official fees for this, although applicants should note that their attorneys (in the UK or elsewhere) may charge fees for updating their clients’ records or taking on representation for these newly created UK rights.
Holders of EUTM or RCD applications which are still pending or RCD registrations which are unpublished at the end of the Transition Period will be given a period of nine months to file corresponding UK applications for the same marks and designs if they wish. The new, equivalent UK registrations and corresponding applications will be accorded the same filing dates and priority dates as the original EUTMs and RCDs.
Note that new UK registrations arising from these procedures will be renewable separately from the rights remaining in the EU. We recommend that trademark and registered design owners should check with us about this.
For existing EUTMs, there will be no need to re-file the same marks in the UK.
Similarly, no action will be required in respect of granted RCDs.
However, care is needed where an EUTM has been registered for more than five years. Evidence of use in the EU will still count in the UK to support the validity of the new equivalent UK registration and evidence of use in the UK will still count in the EU to support the validity of the remaining EUTM, but during the course of the five years after the end of the transitional period, that evidence will be given progressively less weight. In view of this:
Holders of EUTMs should review their portfolios of marks, noting where they have been used within the EU, and file new applications to supplement their existing protection, where appropriate.
Efforts should be made to have all pending EUTM applications registered by the end of 2020 so that they will automatically give rise to equivalent UK registrations to save costs.
Owners of unpublished design registrations should arrange to have them published by the end of 2020, where it is appropriate to do so.
Arrangements should be made for payment of renewal fees for any new equivalent or corresponding UK rights.
New EUTM and RCD applications
New trade mark and registered design applications filed during the Transition Period will be treated in the same way as applications filed before the Transition Period begins.
If a new EUTM or RCD application is planned this year and protection is needed in the UK, then it will be advantageous to file the new application as soon as possible to allow adequate time for the application to be granted and published before the end of the Transition Period.
After the end of the Transition Period, new trade mark and registered design applications must be filed separately in the UK and the EU, if protection is desired in both territories.
Unregistered design rights
Any Unregistered Community Designs (UCD) existing at the end of the Transition Period will be automatically recognised in the UK as a ‘continuing unregistered designs’ for the remainder of the period of protection afforded by the UCD. The UK government has announced that it will create a new Supplementary Unregistered Design (SUD) which will mirror the protection afforded by a UCD.
After the end of the Transition Period, a first disclosure in the EU will not give rise to a UK SUD and first disclosure in the UK will not give rise to an UCD.
2. European Patents
Since the European Patent Office (EPO) is not an EU institution, nothing will change for granted European patents or for pending or as yet unfiled European patent applications, whether filed directly at the EPO or as an International (PCT) Application designating Europe under the EPC.
During the Transition Period, EUTMs, RCDs and UCDs will continue to cover to the UK, and enforcement of these will remain unchanged. After expiry of the Transition Period, EU and corresponding UK rights will need to be enforced separately The UK’s Supreme Court will replace the CJEU as the highest appeal court for trade mark and design matters
4. Exhaustion of IP rights
During the Transition Period, there will be no change to current rules on exhaustion of rights for IP-protected goods placed on sale by, or with the consent of, the rights holder in the EEA.
At least initially, it is expected that the UK will continue to recognise the EEA exhaustion regime after expiry of the Transition Period. In the reverse situation, it is not yet clear whether or not rights relating to IP-protected goods placed on sale in the UK will be considered exhausted in the EEA after expiry of the Transition Period.
5. Note on representation
The European Union Intellectual Property Office (EUIPO) is an EU institution, and rights of representation before the EUIPO are restricted to attorneys who are qualified to act and operate in an EU Member State. This means that UK-based representatives will no longer be able to file new applications and oppositions at EUIPO after the end of the Transition Period. However, they will be allowed to complete proceedings which are already pending, so no change will be needed for already-filed cases.
Dr. Michael Heinrich