Getting ready for the end of the Brexit transition period
This briefing note provides an overview of the impact of Brexit on Intellectual Property (IP) rights from 1 January 2021 and answers some frequently asked questions.
The transition period, which has maintained the status quo, ends on 31 December 2020. From 1 January 2021, there will be a number of changes affecting the protection of IP rights in the UK. Although the majority of the legislative changes have been introduced to minimise the administrative burden on rights holders, these changes will affect all businesses with IP rights.
What are the key changes?
- EU trade marks and designs registered before 1 January 2021 will be automatically cloned in the UK for free, share the same details and dates but be independent. UK representation will be required.
- EU trade mark and design applications pending as at 1 January 2021 will not be protected in the UK but owners have nine months to apply for a comparable right. Registration fees will apply but we are offering 50 per cent off our usual filing fees.
- Where an unregistered community design right arose before 1 January 2021, there will be automatic continued protection in the UK for the remainder of the three year term. There will also be a new right called a Supplementary Unregistered Design.
- Registration and ownership of .eu domains in the UK is being phased out.
- Copyright and patents are largely unaffected.
Frequently asked questions
I am the owner of a registered EU trade mark ('EUTM'), what will happen to my mark on 1 January 2021?
EUTMs will no longer offer protection in the UK. However, the UKIPO will automatically create a comparable UK trade mark for every registered EUTM. Each of these comparable UK rights will be automatically cloned and recorded on the UK trade mark register free of charge.
Put simply, this means that an identical (although legally distinct) mark will be created and effective in the UK. The comparable UK rights will retain the original EUTM filing, priority and/or UK seniority dates. The comparable right will be a fully independent registered UK trade mark right capable of being assigned, renewed or challenged separately from the original EUTM. A separate registration certificate will not be issued but rights holders will be able to access and download the registration details from the UK trade mark register.
It is possible to opt-out and not obtain a comparable UK right if you do not need one. The opt-out procedure will not be available until after the end of the transition period.
If an EUTM application is still pending after 1 January 2021, will it be automatically cloned into a UK right following registration? If not, what do I need to do to ensure protection in both the EU and UK?
EUTMs still pending and therefore registered after 1 January 2021 will not cover the UK. The UKIPO will not automatically clone pending EUTMs. For every outstanding EUTM pending on 1 January 2021, the owner will have a nine month period from this date in which they will be able to apply to register a comparable UK trade mark. The application for the comparable right must relate to the same mark and cover all or some (but not more than) the same goods and services as the original EUTM. The resulting UK application will keep the same filing, priority and/or UK seniority dates as the original EUTM.
To help clients, we are offering a 50 per cent discount on our standard fees for filing and prosecuting a UK trade mark that is based on a pending EUTM in 2021. The usual UKIPO official application fees will apply upon re-filing and the application will be examined under UK law following the same process as standard UK trade mark applications.
What if I have an EUTM designation of an International Registration (IR)?
Registered and pending EUTM designations of International Registrations will be treated in the same manner as described above for EUTMs. However, the comparable UK right will be recorded as a national UK trade mark registration and not a UK designation of the original International Registration.
Will I need new representatives in the UK or the EU?
Only a UK, Gibraltar or Channel Islands address for service will be allowed in relation to new UK proceedings from 1 January 2021. Similarly, save for ongoing proceedings, you will require an EU or EEA representative to represent you before EUIPO. Through our UK and Irish offices, Burges Salmon is able to offer a seamless service and continue to represent clients before the IPOs.
If you require UK based representation for newly cloned UK rights, please get in touch and we can manage that process free of charge.
After 1 January 2021, if an EUTM is used only in the UK will this affect the validity of the EUTM registration? And vice versa, regarding use of a registered UK trade mark in the EU only?
Use of a registered trade mark in the UK before 1 January 2021 will count as use in the EU and vice versa. For example, if you have a EUTM which has only been used in the UK, the use made of the mark in the UK will be taken into account up until 31 December 2020. From 1 January 2021, only use in the remaining EU member states will be considered. This provides rights holders with a grace period (of effectively five years but noting that the significance of the use pre-1 January 2021 will progressively decrease) to put their mark to use in the other territory before it will become vulnerable to cancellation on grounds of non-use.
Will the enhanced protection enjoyed by trade marks with a reputation be impacted?
Similar provisions to the use requirements above apply to reputation from a UK perspective. Reputation of the corresponding EUTM, in the EU but not necessarily in the UK, before 1 January 2021 will be considered for the purposes of proving an enhanced reputation of the comparable UK right. However, evidence relating to the UK can no longer sustain, or contribute to, the protection of an EUTM claiming an enhanced reputation from 1 January 2021, even if that evidence predates 31 December 2020. The rationale for this is that the EUTM must be reputed ‘in the EU’ at the moment of decision taking.
Will ongoing trade marks proceedings and injunctions be affected?
If an EUTM is declared invalid or revoked as a result of proceedings started before 1 January 2021 then the corresponding UK right will also be cancelled (if the same grounds relied upon apply in the UK). In addition, as from 1 January 2021 any EUTM opposition or invalidity request based solely on a UK right will be dismissed.
For proceedings started after 1 January 2021, measures decided or taken by the EUIPO or an EUTM Court will only apply to the 27 EU member states. The same principle applies to decisions taken by the UKIPO or UK Courts in respect of UK marks.
A pan-EU injunction in force before 1 January 2021 will continue to have effect in the UK after the end of the transition period, subject to any court order to the contrary. However, any pan-EU injunction granted by an EU court after 1 January 2021 will not extend to the UK.
Will I need to separately renew both my existing EUTM registration and my new UK comparable right registration?
Yes - once a comparable UK trade mark is created, a separate renewal fee will apply for each comparable UK trade mark and each existing EUTM. Even if you request the renewal of an EUTM before the end of 2020, if the EUTM renewal date is actually in 2021 then the UK comparable right will still need to be renewed separately.
Where the comparable UK trade mark expires within six months after 1 January 2021, a renewal reminder will be sent by the UKIPO on the date of expiry, or as soon as practicable after that date. The reminder will inform the owner that the comparable UK trade mark has expired and will give six months from the date of the letter to renew the right, without being subject to late renewal fees.
We are offering discounted fees for the renewal of any comparable UK rights falling due in 2021.
Will the UK continue to be covered by licences, security interests and other transactions recorded against EUTMs?
Licences or security interests recorded against an EUTM will continue to have legal effect in the UK. Any licence or security interest that references an EUTM and authorises acts in the UK will be treated as if it applies to the comparable UK trade mark. Government guidance recommends that rights holders notify any licensees of the new comparable right, and ensure that the creation of the new right does not breach any agreement.
UK law does not require that transactions such as licences, security interests and assignments are registered at the UKIPO per se, and the UKIPO will not do so automatically. However, registering such transactions within six months does provide some protections which do not apply to unregistered transactions. The UKIPO has extended the period for recording a transaction, in respect of a UK comparable mark for a licence or security interest already registered against the EUTM, to 12 months.
Where an EUTM has been the subject of an assignment before 1 January 2021 that has not been recorded in the EUTM register, the comparable UK mark will be granted to the assignor (previous owner). Either the assignor or the assignee (new owner) will have the right after 1 January 2021 to apply for the registration of the comparable trade mark in the name of the assignee.
Territory provisions in licences should be reviewed.
What about design protection?
From 1 January 2021, Registered Community designs (RCDs) will no longer be valid in the UK. The position regarding the treatment of RCDs largely follows the position on EUTMs above i.e. automatic free of charge cloning of registered rights unless you opt out and a nine month grace period to apply to register a comparable UK design if your application is pending.
We are offering clients a 50 per cent discount on our standard fees for filing and prosecuting a UK design that is based on a pending RCD in 2021. The usual UKIPO official fees will apply.
Unregistered Community Designs (UCD) before 1 January 2021 will be protected as a UK continuing unregistered design and will be automatically established on 1 January 2021. The right will continue to be protected in the UK for the remainder of the three year term attached to the UCD. Under a new law, the UK is also creating a UK unregistered design right called a Supplementary Unregistered Design (SUD). This right will ensure that the full range of design protection provided in the UK before 1 January 2021 will remain available after the end of the transition period.
Will copyright and patents be affected?
Copyright is largely unaffected by Brexit. Patents are also not affected. The European Patent Convention and the EPO are independent of the EU.
Will EU Geographical Indications ('GIs') continue to be protected in the UK after 1 January 2021?
The UK is establishing its own GI registration system, to come into operation 1 January 2021. All existing UK products registered under the EU’s GI schemes will remain protected under the UK GI schemes.
Can I continue to own .eu domain names after 1 January 2021?
The registration and ownership of .eu domains in the UK is being phased out. You can only register or hold .eu domain names if you are an EU/EEA citizen, not a citizen but resident in the EU/EEA or you are an organisation, business or undertaking that is established in the EU/EEA.
How we can help
Burges Salmon’s IP team is ready to advise on all aspects of these changes and to continue to protect your IP rights in both the UK and EU. In addition to our existing team of highly-experienced IP specialists, we have opened a new subsidiary office in Ireland so that we can continue to deliver our market-leading expertise and insight in the EU, as well as help clients with their Irish IP rights.
If you have any questions, please get in touch with your usual Burges Salmon contact or
trademarks@burges-salmon.com. Please also contact us if you would like further information on how our multi-disciplinary
International Trade team can assist you across a range of issues including import/export, business immigration, trade related disputes and general post-Brexit related enquiries.