UK: What Does The Expiry Of The Brexit Transition Period Mean For Your IP Rights?

The United Kingdom (UK) left the European Union (EU) on 31 January 2020, although many of the effects of this have been suspended during the Brexit transition period of the withdrawal agreement, which is set to expire on 31 December 2020.

So, what does the expiry of the transition period mean for your intellectual property (IP) rights? In summary:

European patents

The European Patent Office (EPO) is not an EU institution and hence European patents will be unaffected by Brexit. European patent applications will continue to designate the UK, and we will remain European Patent Attorneys able to represent clients at the EPO.

EU trade mark and design registrations

EU trade mark and design registrations, as well as EU designations of International trade mark and design registrations, will cease to cover the UK and separate UK registrations will automatically be created that will provide equivalent protection in the UK.

EU trade mark and design applications will have to be re-filed in the UK within nine months of the end of the transition period in order to retain filing and priority dates of the EU application.

The European Union Intellectual Property Office (EUIPO) will no longer accept representation by UK representatives, although we will still be able to handle EU trade mark and design matters via our international network of associates.

National IP protection in the UK

The United Kingdom Intellectual Property Office (UKIPO) will require a UK address for service for the filing of UK patent, trade mark and design applications and for challenging or defending UK IP rights.

What happens to your existing UK and European IP rights? Who can represent your interests in the UK and Europe?

Patent protection will be unaffected by Brexit as the EPO is not an EU institution and there is currently no EU system for protecting patents as there is with trade marks and designs. The UK will continue to be a member of the European patent system, European patent applications will continue to designate the UK, and we will remain European Patent Attorneys able to represent clients at the EPO.

In respect of trade marks and designs, the UK is currently covered by separate UK and EU systems of protection. The UK system will of course be unaffected by Brexit. However, the EU system will cease to cover the UK from the end of the transition period and the UK will automatically issue equivalent new rights under the UK system.

The holders of any registered trade marks and designs under the EU system will automatically be issued with an equivalent registration under the UK system that will provide equivalent protection.

The holder of any pending EU trade mark or design applications will not automatically be issued with an equivalent application under the UK system and instead will have to apply for equivalent protection under the UK system within nine months of the expiry of the transition period in order to benefit from the same filing date and priority date as the EU application.

The unregistered design rights that are granted under the UK and EU systems have several significant differences, which include that surface decoration is protected under the EU system but not the UK system, and hence the protection provided under the EU system cannot be replicated by simply granting a right under the existing UK system. Accordingly, any unregistered design protection that exists under the EU system will be automatically replaced by a new UK "continuing unregistered design" that will provide equivalent protection for the remaining term of the EU right. In addition, the UK is creating a new unregistered design right called "supplementary unregistered design" that will provide protection equivalent to the EU system and hence will ensure that all forms of unregistered design protection that are currently available will continue to be available in the UK following the end of the transition period.

In addition to the above, the EUIPO, which administers EU trade mark and design rights, will no longer accept representation by UK representatives following the expiry of the transition period. However, we will of course still be able to handle EU trade mark and design matters via our international network of associates.

Because of this, from 1 January 2021 the UKIPO will also require a correspondence address (i.e., an "address for service") in the UK (which for these purposes includes the Isle of Man), Gibraltar or the Channel Islands. Accordingly, parties not based in the UK will require a representative with a UK address in order to file UK patent, trade mark and design applications or challenge or defend a UK IP right in proceedings before the UKIPO, such as opposition, invalidation, or revocation proceedings.

Originally published 22nd December 2020

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.