The Brexit transition period has now concluded. As the process and legislation surrounding IP was largely in place prior to the UK Government securing a deal with the EU, there is little change from the position as advised prior to 31 December.
For Copyright and Patents there is far less immediate change. You should however review your full IP portfolio, including domain names, to ensure no protection is lost, nor any key proceedings have fallen away, because of the transition period coming to an end.
Below we set out some of the more common scenarios that may apply to your business.
Trade marks
I have a registered EU trade mark (EUTM) and/or an International Registration (IR) designating the EU
What has happened?
EUTMs/ IR (EU) designations no longer protect trade marks in the UK.
The UK Intellectual Property Office (UK IPO) has created a comparable UK trade mark (UKTM) on 1 January 2021 to ensure continued protection. The filing and registration dates of the ‘cloned’ UK registration are the same as that of the corresponding EUTM/IR, although the registration number will differ slightly.
What do I need to do?
Nothing – the new comparable UKTM rights have been created automatically and free of charge.
You won’t get a UKTM registration certificate but you can access the new mark details on the UK IPO website. If you haven’t used the mark in the UK, and don’t intend to, you can opt out of the process after 1 January 2021 (this form is not yet available).
I have a pending EU trade mark application and/or a pending International Registration designating the EU
What has happened?
You have not automatically received comparable UK rights for pending EUTMs/ IR (EU) designations.
Instead you have 9 months to apply for a comparable UKTM to retain the filing date of the pending EU application/designation. These new applications will be subject to the same examination process as usual UKTM applications. The usual application fees will also apply.
What do I need to do?
If you need UK protection, you’ll need to file a UK application within 9 months from 1 January 2021 to retain the filing date of the EUTM application.
I have a registered EU trade mark or IR designating the EU due for renewal soon
What has happened?
If the renewal date was before the end of the transition period and you renewed the mark, the IPO will also treat the comparable UK right as being renewed.
If the renewal date is after 1 January 2021, separate renewals are needed and you will have to pay UK and EU renewal fees. Even if you renewed the EU mark early, you’ll still need to renew the comparable UKTM created on 1 January.
What do I need to do?
Renew the EUTM as soon as possible if the deadline is approaching.
Review any deadlines which fall between now and 1 July 2021 and make sure that you renew the UKTM separately.
I have a registered EU trade mark or IR designating the EU for which I have missed the renewal date
What has happened?
If you’ve missed the EUTM renewal deadline but are still within the 6 month grace period allowed to file a late renewal action, a comparable UKTM has been created but with an expired status.
If you now renew the EUTM inside the 6 month period, the new UKTM will be treated as renewed and you won’t incur any additional fees. If not, the UK IPO will treat the UKTM as if it was never created.
What do I need to do?
Review your missed deadline(s) and check if you’re still in the 6 month grace period. If you are, you should renew the EUTM/IR now.
If not, and you need EU/UK protection, consider re-filing trade mark applications now.
Pending trade mark applications and proceedings
I have pending trade mark opposition proceedings either against my EU trade mark application or by me against a third parties’ EUTM application
What has happened?
If the opposition is based solely on a UK mark, it will have fallen away. The third party may try to oppose your comparable UK TM created on 1 January.
If it is based on multiple rights including EUTMs and UKTMS, the opposition will continue in relation to the EUTM(s) only.
What do I need to do?
Review your position and the basis of any opposition. Contact us if you need help with defining your strategy.
I have pending trade mark cancellation action either against my registered EU trade mark or by me against a third party’s EUTM
What has happened?
Even if a mark is subject to cancellation proceedings, the UK IPO will still create a comparable UKTM on 1 January. However, they will cancel the comparable UK right if EU proceedings cancel the mark.
What do I need to do?
Continue to pursue or defend the cancellation if you are doing so. Consider re-filing in the UK if this is an important market for you. Alternatively, depending on your position, consider settlement or co-existence arrangements.
I have pending trade mark infringement action
What has happened?
As of 1 January 2021, UK courts can no longer act as EU courts in trade mark matters and issue pan-EU relief. Although UK courts are still able to hear such cases as if the UK were still an EU member state, any relief, e.g. injunctions, will only apply to the comparable UK right.
Any existing pan-EU relief, e.g. injunctions, in force on 1 January 2021 will continue to apply in relation to newly created UK right.
What do I need to do?
Contact us to talk about the next steps.
If you’re bringing an infringement action in a UK court, be aware that the relief will no longer apply in the EU after 1 January, nor can the UK court decide on the validity of EUTMs.
If you’re defending an action, this may be a positive. But you should also consider that depending on your position, the ability to tie up the EU position in any settlement could give leverage in settlement discussions.
I have been “put to proof” in relation to my existing EUTM
What has happened?
Use of an EUTM, whether in or out of the UK prior to 1 January 2021, will count as use of the comparable UK trade mark. However if the period for which you must prove use is either side of 1 January 2021, you’ll need to show use in the UK too.
What do I need to do?
Consider your position carefully. Use must not be token use but if you have not used a mark, or use a mark in a form different to that which is registered, consider re-filing the mark(s) in the UK and EU now.
Licences, security interests and assignments
I have licence or security interest recorded against an EUTM
What has happened?
Subject to any specific terms within it, a licence or security interest recorded against an EUTM continues to have legal effect in the UK after 1 January 2021. A licence or security interest referring to an EUTM and authorising acts in the UK will be treated as if it applies to the comparable UK mark.
What do I need to do?
Notify any licencees of the new UK right and ensure the creation of it doesn’t breach any other agreement. Contact us for advice on this if you’re not sure.
Licences/Security interests don’t need to be registered but can help with getting full relief for infringement. The existing 6 month period to record a transaction will be extended to 12 months from 1 January 2021 in relation to the comparable UKTMs which are the subject of a license/security interest already recorded at the EU IPO.
I have assignment of an EUTM to or from me/my company
What has happened?
Where an EUTM was the subject of an assignment prior to 1 January 2021, and this hasn’t been recorded at the EU IPO, the comparable right will be created in the name of the assignor.
What do I need to do?
Both the assignor and assignee now have the right to apply to the UK IPO for recordal of the assignee as owner of the comparable UK trade mark.
Designs
The UK Government has passed legislation to make sure that EU registered designs continue to be protected and can be enforced. The Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019 came into force at the end of the transition period.
Registered Designs
I have a Registered Community Design (RCD) and/or a Registered International (Hague) Design designating the EU
What has happened?
RCDs and International (EU) design designations no longer protect designs in the UK.
The UK IPO created an equivalent registration for existing designs which are fully published.
What do I need to do?
Nothing - the new comparable rights have been created automatically and free of charge.
The design proprietor will also have an opportunity to opt out after 1 January 2021 (this form is not yet available).
I have a pending RCD application and/or International (Hague) Design designating the EU
What has happened?
The UK IPO hasn’t automatically created comparable UK rights for designs which are pending, haven’t yet been published, or in the case of an international designation were still at the application stage or not yet accepted by the EU IPO at the end of the transition period.
Instead you now have 9 months to apply for a comparable design in the UK to retain the filing date of the pending EU application/designation.
What do I need to do?
If you need UK protection, consider filing a separate registered design application now. You’ll need to file a UK application, and incur the same fees as filing now, within the 9 months after 1 January 2021 to retain the filing date of EU application.
I have an unregistered Community design right
What has happened?
Any unregistered Community design right arising on or before 31 December 2020 will continue to be valid for the rest of the protected period.
The UK is also creating an additional unregistered design right which should extend the scope of the existing UK unregistered right to cover surface decoration, which is welcome.
What do I need to do?
Nothing yet – await further legislation in relation to the new unregistered design right.
As usual, if you think you may want to rely on unregistered right(s), ensure that you document your design process and keep relevant and date/time stamped document trails of the design process.
I have an RCD or International (Hague) Design designating the EU due for renewal soon
What has happened?
If the renewal date was before the end of the transition period and you renew the design, the UK IPO will treat the comparable UK right as being renewed. If the renewal date is after 1 January, you will need to renew separately.
What do I need to do?
Renew the design as soon as possible if the deadline is approaching. If the deadline was after 1 January you will need to renew the EU design/designation and newly created UK right separately. If the EU design/designation can be renewed early, you’ll still need to renew the comparable right created on 1 January.
If you’ve missed the renewal deadline but are still within the 6 month grace period allowed to file a late renewal action, a comparable UK registered design will have been created but will hold an expired status. If you renew this in the 6 month grace period at the EU IPO, the new UK right will be treated as renewed and you won’t have to pay any additional fees
Pending design applications and proceedings
I have pending registered design invalidity proceedings
What has happened?
If an RCD is subject to invalidity proceedings which extend beyond the end of the transition period, the new UK registered design will likely face the same decision as the EU protected design.
Despite this, where an EU RCD is declared invalid, the new UK right will not be declared. This means if the UK design was on the UK register at the time invalidation proceedings were initiated and an application for a declaration of invalidity of the UK design had been made on that date.
What do I need to do?
If you have pending proceedings that are continuing into 2021, contact us to talk about next steps.
I have pending RCD infringement proceedings
What has happened?
As of 1 January 2021, UK courts can no longer act as EU courts in these matters, nor can they grant pan-EU relief. Although UK will still be able to hear such cases as if the UK were still an EU member state, any relief will only apply to the comparable UK right.
Existing pan-EU relief, e.g. injunctions, in force on 1 January 2021 will continue to apply in relation to newly created UK rights.
What do I need to do?
Contact us to talk about the next steps.
If you’re bringing an infringement action in a UK court, be aware that the relief can no longer have effect in the EU after 1 January, nor can the UK court decide on the validity of EU RCDs.
If you’re defending an action, this may be a positive, but you should also consider that depending on your position, the ability to tie up the EU position in any settlement may give leverage in settlement discussions.
I have pending RCD IPO actions concerning a UK right
What has happened?
Proceedings before the UK IPO tribunal which are ongoing will continue to be heard. This will include proceedings in which the RCD or International (EU) design proprietor has brought an action against a UK national right.
If you’re a defendant in IPO proceedings based on an RCD or international (EU) design right, or you hold an RCD or international (EU) right and are involved in proceedings to oppose or cancel a UK registered design, these proceedings will continue.
What do I need to do?
Nothing, the proceedings will continue.
Licences / Security Interests / Assignments
I have a licence or security interest recorded against an RCD or International design designating the EU
What has happened?
Subject to any specific terms within it, a licence or security interest recorded against an RCD or International (EU) design will continue to have legal effect in the UK and will be treated as if it applies to the comparable UK right created.
What do I need to do?
Notify any licencees of the new right and ensure the creation of it doesn’t breach any agreement.
Licences/Security interests don’t have to be registered but can assist with obtaining full relief for infringement. The existing 6 month period to record a transaction will be extended to 12 months from 1 January 2021 in relation to the comparable UK rights which are the subject of a license/security interest already recorded at the EU IPO.
Copyright
Broadly speaking, copyright arises automatically in original works without the need for registration. The UK is a member of the key international copyright treaties which will not be affected by the UK’s exit from the EU. Copyright protection will therefore be largely unaffected. The EU Regulations and Directives on copyright and related rights will also be transposed into UK law.
With regard to sui generis database rights, the current position is that all businesses situated in the European Economic Area (EEA) are eligible for database rights in each EEA member state. From 1 January 2021 database rights existing in the EEA and UK will continue to exist until expiry. This will be either 15 years from the end of the year in which the making of the database was completed or, if it was published during that time, 15 years from the end of the year in which the database was first made available to the public.
However, moving forward, only UK citizens, residents and businesses will be eligible for database rights in the UK. EEA member states will also be under no obligation to grant new database rights to UK individuals/businesses in those states. You should therefore review existing licensing arrangements with a view to mitigating any loss of rights.
Patents
For Patents, the situation is far more straightforward and there is no change to the filing or enforcement of patents. This is because the UK remains a member of the European Patent System, which is governed by the European Patent Convention (the EPC), which is entirely separate from the EU.
The Unified Patent Court will be an international patent court established through an international agreement (the Unified Patent Court Agreement) between the EU countries and will hear cases relating to European patents and the new unitary patent.
The Unified Patent Court may never be fully ratified nor ever come into effect. If this happens, Brexit will make no difference to UK and EU businesses.
If the Unified Patent Court comes into force after the UK has left the EU, then the UK, EU and other third country businesses will still be able to use the Unified Patent Court and unitary patent to protect their inventions in the EU. They will also continue to be able to validate the UK upon grant of an EP application as before. UK businesses will also still be able to use the Unified Patent Court and unitary patent to protect their inventions within the other contracting EU countries.
.eu domain names
Only EU citizens, EU and EEA residents and organisations and businesses and undertakings established within the EU or EEA are permitted to register or hold a .eu domain name.
1 October 2020 - UK registrants of .eu domains will have received an email from the EURid (the registry responsible for the running of the .eu top level domain) stating they will lose their eligibility to retain the domain unless they can show compliance with the .eu regulatory framework before 31 December 2020.
21 December 2020 - A further notification will have been sent to those who didn’t demonstrate continued compliance.
1 January 2021 - as of this date any UK registrant who can’t meet the eligibility criteria will have had their .eu domain name withdrawn (meaning it will no longer work).
1 January 2022 - the withdrawn domains will become available for registration by other entities.
You should therefore review your domain name portfolio. If you have any concerns that you did not meet the eligibility criteria in time, speak to your domain registrar or contact us for advice. You should consider transferring the domain to an individual/entity fulfilling the EURid eligibility criteria, discuss the potential transfer to another top level domain e.g. .com or .co.uk and/or consider registering new domains as soon as possible.
If you’re an EU citizen residing in the UK, or a UK citizen residing in the EU, you remain eligible to hold a .eu domain but you may need to update your registration data and/or prove citizenship (if an EU citizen). Contact your domain name registrar as soon as possible.
Geographical Indications
The UK government has set up its own GI scheme and all existing UK products registered under EU GI schemes by the end of the transition period remain protected in the UK. Any businesses seeking to protect a new product name can now apply to the UK scheme. The schemes will be open to producers from the UK and other countries.
Producers of GI products that are protected in the EU can continue to use the EU logo in the UK after the end of the transition period, if they wish.
New UK GI logos will be available to identify products protected under the UK schemes from 1 January 2021. Producers of UK food, drink and agricultural GI products registered before 1 January 2021 will have until 1 January 2024 to change packaging to display the new UK GI logos.
Exhaustion of rights and parallel trade from 1 January 2021
Parallel trade is the import and export of goods protected by genuine intellectual property (IP) rights. Parallel trade occurs when the IP rights in those goods are ‘exhausted’, i.e. they have been placed on the market by the IP owner or with the owner’s consent anywhere within the EEA. The exhaustion of IP rights means that IP rights cannot be used to stop the further distribution or resale of those goods.
Goods which are placed on the market in the UK by, or with the consent of, the right holder after the end of the transition period may no longer be considered exhausted in the EEA. Businesses exporting these IP-protected goods from the UK to the EEA might therefore need the right holder’s consent.
If you are a parallel exporter:
- Do you export IP-protected goods to the EEA (e.g. goods branded with a trade mark) that have already been placed on the UK market and where you don’t need permission from the rights holder to export those goods?
- If so you may need to contact the rights holder to get permission to continue after 1 January 2021. They are not obliged to give this permission.
- Dependent on the above, you may then need to review your supply chain/business arrangements.
If you’re an IP rights holder you need to consider if you want to allow parallel exports of your IP-protected goods from the UK to the EEA after 1 January 2021. If you’re not sure of your position on this, contact us for expert legal advice.
Supplementary protection certificates and regulatory protection
In general terms the SPC regime in the UK will continue to operate as before once the transition period is over. Indeed, the requirements for getting an SPC, and the process for applying for an SPC, will be largely unchanged and the UK will largely mirror the existing EU law relating to SPCs. However, you should contact us for advice if you need help in relation to SPCs.
Our intellectual property section has more information on how we can help you with issues related to trade marks, copyright, patents and other IP issues.
