Brexit, the Transition Period and Intellectual Property

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On 31 January 2020 the UK formally left the European Union, but how does this affect your Intellectual Property rights?

UK and EU Flags

On 1 February 2020, the UK entered into a transition period which will run until 31 December 2020. During this period EU law will continue to operate as usual within the UK, this means that there will be no changes to the current Intellectual Property (IP) system until 31 December 2020.

What does Brexit mean for European Patents?

The European Patent Convention and the European Patent Organisation (EPO) are independent intra governmental entities and are not part of the EU, European patents will continue to cover the UK after and will not be affected by Brexit.

UK based European patent attorneys to represent their clients before the European Patent Office and remain unaffected by Brexit.

How will Brexit affect existing and future EU Trade Marks?

The UK will remain part of the EU trade mark system until the end of the transition period, therefore applications for European trade marks (EUTMs) can be validly filed by UK representatives at the European Union Intellectual Property Office (EUIPO) until 31 December 2020.

From 1 January 2021, EUTMs will no longer protect trade marks in the UK, but under the Withdrawal Agreement Act the IPO will create a comparable UK trade mark for all right holders with an existing EU trade mark. Each of these UK rights will:

• Be listed on the UK Trade mark register
• Have the same legal status as if applied under UK law
• Keep the original EUTM filing date
• Keep the original priority/UK seniority dates
• Be a fully independent UK trade mark which can be challenged, assigned, licensed and renewed.

For any EU marks which are registered before December 31, 2020, a corresponding UK mark will be automatically created by the UK Intellectual Property Office (UKIPO) at no extra charge to the applicant.

For all EU marks which are still pending after December 31, 2020, a new UK trade mark application will have to be filed, to continue equivalent rights in the UK. If the new UK trade mark application is filed within nine months of 1 January 2021, the new UK filing will retain:

• The earliest filing date of the European trade mark application
• Any valid priority or seniority claims of the European trade mark application

What affect does Brexit have on European Registered Designs?

The UK will remain part of the EU registered community design system throughout the transition period.

Registered community designs (RCD) will continue to cover the UK until 31 December 2020.

For all RCDs which are registered before December 31, 2020, a corresponding UK design will be automatically created by the UK Intellectual Property Office (UKIPO) at no extra charge to the applicant.

For all RCDs which are still pending after December 31, 2020, the applicant will be able to apply to the UKIPO for a comparable UK registered design for a period of up to nine months from the end of the transition period.

To ensure brands are protected in the EU, it is recommended to continue filing applications for designs to the EUIPO as usual.

What affect does Brexit have on Design Rights (Unregistered Designs)?

At present two parallel systems operate in the UK for protecting unregistered designs, namely UK Design Right (UDR) and Unregistered Community Design (UCD) right.

The term and scope of protection afforded by these two systems differ. For example UCD has a maximum term of 3 years and protects the appearance of the whole or a part of a 2D or 3D product resulting from the features of the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

Meanwhile UDR has a maximum term of up to 15 years from the end of the year in which the design was first recorded or an article was made according to the design, and protects the shape and configuration of 3D dimensional articles and excludes 2D articles, surface decoration and patterns. UDR may protect internal or external features of a design.

Once the transition period ends, on 1 January 2021, UCDs will no longer be valid within the UK. On this day, UCDs will be automatically replaced by UK rights.

The UK Government will introduce a new UK supplementary Unregistered Design Right (SUD), this will ensure the extensive range of design protection remains available after the UK leaves the EU.

SUD will mirror the scope of protection afforded by UCD and will cover both 2D and 3D designs.

SUD will be established by first disclosure in the UK or another qualifying country. It will be subject to interpretation by the UK Courts.
The first disclosure of an article within the EU will not be sufficient to establish SUD. However, and EU disclosure may be novelty destroying and may prevent the owner from seeking UDR.

UK design right will continue to function after 1 January 2021 alongside UCD in the EU and SUD in the UK.

To avoid imbalance between UK and EU designers and create consistency, the qualifying criteria for UK design right will change on 1 January 2021.

Designers will qualify for UDR if they are:

• Residents in the UK or a qualifying country
• Businesses formed under UK law or a qualifying country.

 

If you require any advice on managing your intellectual property rights then please contact us on brexit@franksco.com.

Article Published February 7, 2020