EU legislation in the field of trade marks and designs will cease to apply in the UK from 1 January 2021, but the EU’s Intellectual Property Office (EUIPO) has set out how Brexit will affect intellectual property in the UK and in the EU.
This reflected previous guidance issued by both the UK Intellectual Property Office (UKIPO) and EUIPO and so nothing unexpected was included, but it is a useful reminder.
So, how will your intellectual property be affected?
After 31 December, the end of the transition period, EU trade marks will, in principle, no longer cover the UK (including Gibraltar, the Channel Islands, the Isle of Man, and dependent UK territories). However, the UKIPO will issue, free of charge, a comparable UK trade mark to owners of registered EU trade marks, to ensure protection is not affected.
Owners of EU trade mark applications which are not registered before the end of the transition period will not receive a comparable UK trade mark, and their application will no longer cover the UK (only the remaining 27 member states). If protection is needed in the UK, a separate UK trade mark application will need to be filed and full fees paid for this.
From the end of the transition period, international applications, made using the Madrid Protocol, via the World Intellectual Property Organisation (WIPO), will no longer be allowed to use an EU trade mark as the base application/registration, unless the applicant is a national of an EU member state, or has a domicile or a real and effective industrial or commercial establishment in an EU member state.
Any international registration, made using the Madrid Protocol, via WIPO, designating the EU, will continue to receive protection in the UK following the end of the transition period. Any international applications, designating the EU, that are not registered by the end of the transition period, will not receive this and if protection is needed in the UK, a separate UK trade mark application will need to be filed and full fees paid for this.
UK courts will no longer be deemed competent for taking measures with effect in the EU or as regards the validity of EU trade marks. Therefore disputes regarding the infringement and/or the validity of EU trade marks, involving EU trade mark owners established in the UK, will have to be settled by EU trade mark courts. However, measures taken by a UK court, or that become final, as of the end of the transition period, will be enforceable in the EU where these result from legal proceedings which were instituted before the end of the transition period
Legal representatives for EU trade marks will have to be qualified in one of the EEA member states, be established or have a place of business in one of the EEA member states and be entitled to act as a representative in trade mark matters in the member state of the EEA in which they are qualified. UK legal representatives who do not fulfil this criteria will be automatically removed as the legal representative for EU trade marks on 1 January 2021.
In ongoing proceedings that have not completed by the end of the transition period, the listed legal representative will continue to represent the owner of the EU trade mark until these proceedings have concluded and will not need to be replaced.
HCR will continue to be able to assist in the filing of EU trade mark applications.
The effect of the end of the transition period on EU design rights is much the same as with EU trade marks.
However, if you hold a pending registered Community design (RCD) application on 1 January 2021, you will be able to apply to register a UK design in the nine months after 1 January 2021 and retain the earlier filing date of the pending RCD. The UK application must relate to the same design as that filed in the pending RCD application.
Owners of RCD will receive a comparable UK registered design in the same way as registered EU trade marks.
There will be no impact upon the way that the European patent system works. This is because the European Patent Office is not an EU body; it is an intergovernmental agreement that operates independently of the EU, and the patents are treated accordingly.
A possible EU-wide unitary patent system has stalled and is not yet in place – unless the UK has an agreement to the contrary, the UK would not be part of that system.