EU law will continue to operate as it does now in the UK and the Intellectual Property system will continue as it is until 1 January 2021. As a reminder, the existing European patent system will be unaffected by the UK leaving the EU so no action by patent holders is needed.
There are extensive terms in the Withdrawal Agreement that set out the provisions to be applied once the transition period expires and which ensure that the rights of the owners of intellectual property rights are protected.
The key points are:
- Holders of EU Trade Marks (EUTMs), Registered Community Designs (RCDs), and Community Plant Variety Rights (CPVRs) at the end of the transition period will be given a fully equivalent UK right at no official cost and no forms will need to be filed. This means that if you own 10 EUTMs, RCDs or CPVRs on the day of exit, on the day after you will own 10 UK registrations plus 10 EU registrations (covering the remaining 27 member states). The UK registrations will retain the original filing, priority and seniority dates and the first renewal dates will be the same as the original EU registrations.
- If the EU right is subsequently revoked due to a procedure which is pending at the end of the transition period, then the equivalent UK right will also be revoked (as long as the grounds for revocation apply in the UK).
- A UK address for service will not be required for the equivalent UK right for at least three years after the end of the transition period.
- Holders of EU Geographical Indications (GIs) will be given an equivalent UK GI right
- Holders of Unregistered Community Designs will become the holder of an equivalent unregistered right in the UK
Applicants for EUTMs, RCDs and CPVRs that are pending at the end of the transition period will have 9 months to reapply for the equivalent UK rights. The usual fees and forms will be required, but the original filing, priority and seniority dates will all be retained. To assist with this, Mewburn Ellis is offering to waive our service fees to re-file pending EU trade mark applications. Learn more.
Genuine use of an EUTM in the EU27 countries will be recognised to support the validity of the “cloned” UK registration, so even if a registration has not been used in the UK for more than 5 years before exit day, the new UK registration will not automatically be vulnerable to cancellation for non-use.
Use of an EUTM in the UK before exit day will also be valid to help defend a non-use cancellation action against the remaining EU registration.
Pending actions based on UK only rights may be dismissed.
The UKIPO has confirmed that all EUTMs for which an equivalent UK right is generated post-Brexit will be listed with a “UK0009” prefix, to identify these rights from existing UK registrations and enable a clear link to the “parent” EU registration. Re-registered designs will consist of the full 13 digit RCD number prefixed with the digit ‘9’.
International Trade Marks and Designs
The UK will take measures to ensure continued protection in the UK of international trade marks and designs. This means that UK designations should be created automatically on exit day, again with no forms and no fees needed.
It will still be possible to file under the Madrid System for International trade mark registrations designating the UK and for registered designs under The Hague Agreement, as the UK has ratified both agreements.
Other issues
IP rights exhausted in the UK and the EU before the end of the transition period will remain exhausted in both territories.
Pending applications for Supplementary Protection Certificates (SPCs), which are based on an EU regulation, will continue and can be granted after the end of the transition period.
Key recommendations:
- It is not necessary at the moment to double file for both UK and EU registrations unless there are specific reasons to do so, such as potential EU oppositions, or a need for a swift UK registration.
- Consider renewing all UK trade mark registrations where there are equivalent EU registrations, rather than claiming seniority and allowing them to lapse.
- Review ongoing EU trade mark opposition and invalidation proceedings because, if they are based solely on a UK right, the EUIPO has indicated that the proceedings will be dismissed as of the withdrawal date.
- Anti-counterfeiting programmes should be reviewed, particularly the filing of customs notifications in the EU and the UK.
- Check commercial agreements such as co-existence agreements as any references to the EU in relation to territory, governing law and jurisdiction may need to be revised to specifically include the UK.
- Assess whether your management system will cope with the new numbering systems and the potential for double the number of renewals.
- Ask your current UK representatives if they have in place measures to ensure they can continue to act before the EUIPO after Brexit.