Brexit and the Implications for IP Rights | 04.10.2021

The UK has now left the EU, following a transition period that ended on 31 December 2020.  This means that EU Trade Marks (EUTMs) and Registered Community Designs (RCDs) no longer offer protection in the UK.  Here we explore the mechanisms that are in place to protect these IP rights as well as the other headline Brexit issues.

We continue to be in a position to handle EU and UK trade mark, patent and design matters from our offices in London and Munich.

• What Happens to Granted EU Trade Mark and Design Rights?: At the start of January 2021 the UK Intellectual Property Office (UKIPO) automatically “cloned” all granted EUTMs, designations of EUTMs under the International registration system, RCDs and Hague designs designating the EUIPO, on to the UK register allowing the protection to continue in the UK.  There are now more than 2 million new rights on the UK register.
• What About Pending EU Trade Mark and Design Rights?: Any EUTM or RCD applications that were still pending (i.e.  not granted) on 1 January 2021 were not cloned.  In order to maintain your rights in the UK it was possible to re-file the EUTM or RCD application in the UK by 30 September 2021. Any re-filed application retained the filing date and any priority date of the EUTM and RCD application.
• How does Brexit change my trade mark and design filing strategy?: The UK has left the EU so filing an EUTM or a RCD does not provide protection in the UK and a separate UK application must be filed.  We have developed filing packages to provide protection across both markets in a cost effective an efficient manner and are on hand to identify the strategy appropriate to your business.
• How Does the Renewal Process Work?: Fees must be paid separately on the cloned rights in the UK as well as on the EUTMs and RCDs.  The renewal date of any cloned UK TM will be the same as the renewal date of the original EUTM.  If an EUTM or RCD was due for renewal after 31 December 2020, renewing early would not have side-stepped the need to renew the UK clone.
• Review Your UK Rights: You may have filed parallel EUTMs or RCD applications and UK trade mark and design applications for the same trade marks/designs.  If so, you will need to decide whether to maintain the UK trade marks or registered designs in addition to the cloned rights in the UK or vice versa in order to avoid paying two sets of renewal fees.  Although the cloned rights have been created by the UKIPO, it may be possible to opt out so that they are removed from the register now, provided certain conditions are met.
• UK Address for Service: As of 1 January 2021, the UKIPO requires a UK address for service for new applications and new contentious proceedings before the IPO in respect of trade marks, patents and designs.  The position of the UKIPO essentially mirrors that of the EUIPO.  We will continue to be able to represent applicants and rights owners before both the EUIPO and UKIPO.
• What are the Customs Recordal procedures?: The UK is no longer part of the EU, and so in order to have UK border force take action in relation to your IP rights an Application for Action (AFA) needs to be submitted directly to the UK authorities.  In order for EU authorities to take action, a separate EU application needs to be submitted via an EU member state.  We are able to handle these matters from our offices in London and Munich.
• Are There any Changes for Patents?: Patents are unaffected by Brexit because the European Patent Office (EPO) is not an EU agency.

We have contacted our clients with further details.  If you would like to discuss how Brexit impacts your intellectual property rights, please get in touch via gje@gje.com.