Patents, Trade Marks, Designs & Copyright

IP and Brexit

What will happen to intellectual property rights when the UK leaves the EU?

On 31 January 2020, the United Kingdom officially left the European Union and entered into a transition period which is due to end on 31 December 2020.

During the transition period, there have been no changes to intellectual property rights. However, from 1 January 2021, there will be some significant changes which intellectual property rights holders should be aware of.

Patents

European patents will not be affected by Brexit.

The European Patent Office which grants “European” patents is not an EU institution and the UK will remain a member state, so European patent applications will still cover the UK.  When a European patent is granted it is necessary to validate in each country where you want the patent to have effect, so, if validated in the UK, the European patent will have effect in the UK.

There will be no change to the ability of our patent attorneys to represent our clients in the UK and EU.

Trade Marks and Community Designs

From 1 January 2021, EU trade mark and Community designs applications and registrations will no longer have effect in the UK.

Registered trade mark and design rights

The UK Intellectual Property Office (UK IPO) will automatically create comparable rights for all EU trade marks and Community designs which were registered on or before 1 January 2021.

The comparable UK right will be granted free of charge by the UK IPO using existing data available on current EU registers and without any burden on the owner to undertake any administrative procedure. The comparable rights will keep the original EU registration number pre-fixed with “UK009” for trade marks, and “9” for designs.

Pending trade mark and design applications

If your EU trade mark or Community design applications have not proceeded to registration before 1 January 2021, they will no longer have effect in the UK. It will, however, be possible to file a corresponding new UK application which, if filed within 9 months of 1 January 2020, can retain the filing / priority date of the original EU application.

Expired rights

The UK IPO will also create comparable rights for any EU trade mark or Community design registrations which expired in the 6 months prior to 1 January 2021. Where the EU or Community registration is renewed at the EUIPO in the 6-month grace period, the comparable UK right will also be treated as having been renewed (but cannot be renewed independently of the EU registration).

Renewal of comparable UK rights

UK comparable rights will fall due for renewal on the same date as the original EU trade mark or Community design registration on which they are based.

Where this date falls after 31 December 2020, a separate renewal fee must be paid to the UK IPO to maintain the UK comparable right.

UK comparable rights can be renewed or allowed to lapse independently of the EU right from which they are derived.

What does this mean for my trade mark and design rights?

If Wilson Gunn is the registered representative for your EU trade mark and Community design registrations, you do not need to do anything.

We will automatically become the representative for the corresponding new UK rights and will enter these onto our records at no charge. These new rights will need to be renewed in the future and we shall endeavour to remind you when the UK comparable right is due for renewal.

If you are currently employing a non-UK representative in relation to any EU or Community registrations (or applications), we would be happy to assume responsibility for the newly created UK rights at no charge.

If we are handling any EU trade mark or Community design applications which are pending at 31 December 2020, we will seek your instructions as to whether you wish to apply for protection in the UK. We will also be happy to file UK applications corresponding to pending EU and Community applications which are currently handled by representatives elsewhere in the EU.

Filing UK and EU trade mark and designs post-Brexit

From 1 January 2021, if you wish to obtain trade mark or design protection in the UK and the EU, you will need to file separate applications in each territory.

Wilson Gunn will continue to be able to act in the UK and EU. We will be pleased to assist you in filing new UK and EU trade mark and design applications.

Any questions?

If you have any questions regarding these changes or the impact of Brexit on your intellectual property, please get in touch to speak to one of our attorneys.