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It’s happening – Brexit – the changes you need to know

21 October 2020

The Brexit transition period is coming to an end on 31 December 2020 and the real effects on IP rights of the UK leaving the EU take effect from 1 January 2021.

Renewals – Post Brexit there is no need to change how you interact with us to manage your IP rights renewals. Click here for a summary of the key points.

For detailed questions, your Withers & Rogers patent, trade mark or design attorney can advise you on specific cases. However, we are summarising the basics in a quick overview in the following.

The brief message is that we can continue to cater for your needs in both the EU and the UK. There’s no need to change how you interact with us to manage your IP rights. However, there are some considerations you will need to bear in mind, which we cover in the following sections.

Patents

This one’s nice and easy – there is no change to anything about the patent filing and prosecution process resulting from Brexit.

Withers & Rogers continues to be able to file and prosecute patents before the European Patent Office in the usual way, as well as nationally in Germany, France, the UK and beyond.

There are, however, effects in relation to Trade Mark and Design filings, which are set out below.

Applications and Registrations for EU Trade Marks and Registered Designs

There are 2 main scenarios to consider, depending on whether your EU application is fully registered and published by 31 December 2020 or is still pending at that date.

In either scenario, there are advantages to getting EU design applications filed before 31 December 2020, so if you have any registrations in mind, speak to your attorney about the options for getting your registrations on file at the EUIPO well before the end of 2020.

For Trade Marks, the considerations will be slightly different, and a dual UK-EU filing may be more advantageous pre-2021. Your Withers & Rogers Trade Mark attorney can advise you on the options available in this regard.

1. You have a fully registered and published EU Trade Mark or Design application at the EUIPO at 31 December 2020.

This scenario is nice and simple. The UK authorities will automatically create a clone of your EU trade mark or design registration and add it to the UK Register.

You then automatically have separate and independent UK and EU registrations. These can be enforced, abandoned, licensed, transferred and renewed as you wish, separately and independently of one another. Renewal fees will be due as they were for EU rights – i.e. every 5 years for designs and every 10 years for trade marks.

Withers & Rogers can provide this service for both your UK and EU registrations. If you previously had an EEA attorney on record at the EUIPO, but would like a UK firm to act as address for service for the UK counterpart, Withers & Rogers will register ourselves at the UK IPO for you on your UK cloned registration free of charge.

If for any reason you would like to opt out of the automatic UK clone being generated by the UK IPO, we can also handle this for you, just let us know.

2.You have a pending EU Trade Mark or Design application at the EUIPO at 31 December 2020, but it is not yet fully published and registered.

This scenario has a different effect, which needs managing in a different way. After 31 Dec 2020, when your EU application is granted, it will only cover the EU and not the UK. However, for a period of 9 months after 31 Dec 2020, up until 30 September 2021, it is possible to file an application for an equivalent UK trade mark or design registration replicating the effects of the EU existing application in the UK.

If deferment of publication for design applications is desired, this can be continued up to a maximum of 12 months from the filing date of the UK application, but is limited by the deferment deadline for the EU application.

Withers & Rogers can continue to represent you in relation to the EU part of the process and can provide the UK re-filing service for you. We can also file future UK and EU registrations for you without any need for you to change how you interact with us.

Unregistered Design rights

Unregistered design rights currently exist under EU Law and UK national Law. These are created automatically depending upon how and by whom the rights are created and first marketed. If you wish to establish unregistered rights in the UK and the EU, there are steps to take to establish those rights, and your W&R Attorney can advise you on those requirements according to your particular situation.

Other points to consider and discuss with your Attorney

Address for Service

After 31 December 2020, the UK IPO will require an address for service in the UK or Channel Islands for any new procedure. Having an address in another EEA member state will therefore no longer qualify applicants or agents to represent themselves or their clients before the UK IPO in new matters.

.EU Domain Names

Any registrants residing in the UK will cease to be eligible to own a .eu domain name as of 1 January 2021 so the registrant’s details will need to be updated to an entity in the EU (not the UK).

Use of Trade Mark

Trade mark registrations are vulnerable to cancellation for non-use five years post registration.  Any use of the EU trade mark prior to 1 January 2021 in the EU will count as use.  Insofar as the UK comparable trade mark registration (derivating from the EU trade mark registration), post 1 January 2021, all use of the UK comparable trade mark registration will need to be in the UK. Therefore you should diarise the five year period (1 January 2026) to start using in the UK the comparable trade mark registration.

Opposition/Invalidity/Cancellation Proceedings

Any opposition/invalidity/cancellation actions which are pending before the EU IPO as of 31 December 2020 and based solely on UK rights will not proceed and will be disregarded by the EUIPO.

A new opposition will need to be filed against the comparable UK trade mark application.

It is not necessary to bring a new invalidity/cancellation action against the comparable UK trade mark registration since the UKIPO will implement the decision of the EUIPO against the UK comparable trade mark registration.

For any opposition/cancellation/invalidity actions before the UKIPO based on registered EU rights, these actions will continue to conclusion and the UKIPO will automatically replace the number of the EU trade mark registration with that of the UK comparable trade mark registration.

For any opposition before the UKIPO based on a pending EU trade mark application, the UKIPO will stay the proceedings to give the opponent the opportunity to apply for a UK comparable trade mark application within two months of an invitation to do so.

Clearance Searches

You should search the UKIPO Register as well as the EUIPO Register since you will be seeking protection in both the UK and the EU. You may wish to include a common law search for the UK (for unregistered rights) and national searches of the French and German Registers if these are key jurisdictions.

Opt Out

You can opt out of the comparable UK trade mark/design registration but not if the trade mark is in use or subject to a licence or you have started litigation based on the comparable UK trade mark registration or if it is contrary to any agreement relating to the EU registration to have a comparable UK registration.

Agreements/Contracts referring to EU

You will need to check the territory clause and add the UK to the EU in any jurisdiction clause and review the list of trade marks/designs and add any comparable UK registration/application.  For any licences, security interests and assignments, you will need to record these against the UK comparable right and ensure that these do not breach any agreement.  The recordal will need to be filed within 12 months of 1 January 2021.