Representation
UK based attorneys will be unable to represent clients on new applications or new proceedings in the EU Intellectual Property Office (EUIPO) from 01.01.2021 unless they have an office in the EU. Your UK based attorney is likely to have made arrangements with an EEA based attorney to represent your interests over EU registered rights. There is a special arrangement for ongoing cases. Although the legislation has not yet been fully passed into law it is likely that only an address for service in the UK will be accepted for new applications and new requests to start proceedings in the UK Intellectual Property Office (UKIPO). All registered and registerable IP rights are affected by this change: patents, trademarks and designs.
Trademarks
Separation of EU and UK trademarks: Comparable UK trademarks will be created automatically for every registered EU trademark. There is no action to take to register this separate UK trademark. They will have the same legal status as a UK mark and keep the original filing (priority/seniority) date as if the application had been originally started in the UK. Your EU trademark will continue to apply in all remaining EU Countries.
Applications for EU trademarks not completed by 31.12.2020 will have nine months to apply in the UK for a separate UK mark (although this is not an automatic process and further fees and the full examination and publication process will have to be undertaken). The original filing date for the EU mark will apply to this cross over application.
These new UK trademarks can be challenged, sold/transferred, licensed and renewed independently from their corresponding EU rights.
International trademarks will be dealt with in the same fashion.
Designs
EU Registered Designs will undergo an automatic re-registering in the UK, they will have the same legal status as if filed in the UK originally keeping the original filing and priority date. There is no need to apply and no fees are payable. The EU rights will exist without protection in the UK.
Applications for Registered Designs not completed by 31.12.2020 will have nine months to apply for a UK corresponding right but fees will be payable and the application will have to go through the UK process of examination.
The new UK Registered Design rights can be challenged, sold/transferred, licensed and renewed independently from their corresponding EU rights.
International Registered Design rights will be treated in the same fashion, although it has been indicated that the rights will not appear on the UK Register for some time (the right is legal and therefore a separate UK certificate is not required to prove existence and ownership).
Unregistered Designs
Unregistered Community Design rights will continue to be recognised and protected in the UK for the remainder of their three year term. As from 01.01.2021 a supplementary unregistered design (SUD) will be available in the UK only. This will provide similar rights to an Unregistered Community Design but the business will need to consider the location of first disclosure (only disclosure in the UK – or another qualifying country – is permitted) as first disclosure in the EU could prevent the right from gaining protection in the UK. All businesses are urged to discuss first disclosure strategy with the attorney.
Patents
As the European Patent Convention is not an EU convention applications can be made direct through the UKIPO or European Patent Office for protection in over 30 European countries. Existing European Patents are not affected.
Copyright
Most works protected by Copyright in the UK will continue to receive protection in the EU (due to International Treaties not EU specific arrangements). EU copyright works will continue to receive protection in the UK.
However, special EU wide arrangements for cross-border portability of online content services, copyright clearance for satellite broadcasts and reciprocal arrangements for database rights will no longer apply to the UK. Separate licensing arrangements will have to be put in place. The UK is setting up its own “Orphaned Works” register to licence use of works of unknown origin or works whose originator’s current location is unknown. UK users will no longer be able to register on the EU Orphaned Works Licensing Register after 31.12.2020.
Parallel Trade
Without a Brexit deal then IP rights in goods placed on the market in the UK may no longer be considered exhausted in the EU. If your business exports goods with IP protection (trademarks/designs) from the UK into the EEA then you are likely to need contractual consent flowing all along the supply chain. That contractual consent may not currently be required so a thorough examination of your position ought to be undertaken. Imports into the UK from the EEA will be unaffected.
If goods are protected by any IP right (registered or unregistered, including copyright) the IP rights owners ought to seek legal advice if they find their goods are being exported from the UK into the EEA.
Border Controls
The cross EU arrangements currently in place to stop IP protected goods at UK borders will no longer apply. Separate border stop applications will have to be made in the UK and EU (specifically of the relevant EU border country). Any existing applications from the EU to the UK will be actioned by HMRC until their expiry (no new application need be made).
Geographical Indications
A new UK based GI scheme will be implemented after 01.01.2021. The details have not yet been published.
BLASER MILLS LAW
INTELLECTUAL PROPERTY TEAM
Sarah Staines – Consultant Solicitor
+44 (0) 1494 478 627
Aaron Wood – Trade Mark Attorney
+44 (0) 1494 478 676