Beyond Brexit transition – the impact on IP

What's the issue?

From the end of the transition period, EU Trade Marks (“EUTMs”), International Trade Mark Registrations designating the EU (“IR(EU)s”), registered Community Designs (“RCDs”) and International Design Registrations designating the EU (“IR(RCD)s”) (collectively “EU Rights”) will cease to have effect in the UK. However, there will be continued protection for EU Rights already registered as at 31 December 2020. Equivalent protection under UK law will arise automatically without any involvement or action from the rights holder. However, any EU Rights that are pending applications as at 31 December 2020 will not get automatic protection.

Where are we now?

All existing registered EU Rights will automatically be cloned into UK comparable marks and designs from 1 January 2021. Rights holders will not have to do anything. However, where applications for EU Rights are pending as at 31 December 2020, applicants will have to file a new UK application for those rights, that corresponds exactly with the equivalent pending EU Right, within 9 months post 31 December 2020 (i.e. on or before 30 September 2021). The new UK application will have the same filing and priority date as the corresponding EU Right but will undergo fresh examination, will be published for opposition, and UKIPO filing fees must be paid.

What impact does this have?

If you are an EU Rights holder you may want to review and prepare your portfolio now in anticipation of these changes. You will also need to make sure you are properly represented before the EUIPO and the UKIPO. From 1 January 2021, UK representatives will not (in most cases) be able to represent EU Rights at the EUIPO, and in the UK you will need a UK representative (or a UK address for service where unrepresented) to file new applications/represent you at the UKIPO. Therefore, you may want to instruct a change of representative for your EU Rights and UK rights as soon as possible to avoid any issues arising on 1 January 2021. After 1 January 2021, you may also want to check that your comparable rights have been cloned correctly.

For more information on the changes to EU trade marks from the end of the transition period, see our article on 5 key changes to look out for from 1 Jan 2021.

Back

Related

Beyond Brexit transition – litigation and the enforcement of judgments

EU law currently provides a simple, fast and cost-effective mechanism for a party to enforce a judgment of the English courts in the courts of an EU Member State and vice versa. This mechanism will no longer be available for claims commenced in the UK after the 1 January 2021, unless otherwise agreed between the EU and the UK.

Beyond Brexit transition – bilateral investment treaties

This article is part of our 'Beyond Brexit transition' series.

Beyond Brexit transition – the impact on freedom of movement

During the transitional period, the freedom of movement principle continues to apply and employers have been able to employ and recruit EEA nationals and Swiss nationals on the same basis as before Brexit.

Beyond Brexit transition – continued uncertainty for construction projects

This article is part of our 'Beyond Brexit transition' series.

Beyond Brexit transition – interpretation of retained EU law

Until now, the process of the UK leaving the EU has had very little direct impact on the law and regulation applicable in the UK.