Brexit Update - Intellectual Property

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Please be reassured that Franks & Co Limited have taken contingency measures to ensure that the firm will continue to operate without any disruption in our services in view of the COVID-19 global pandemic.

Our attorneys and support staff are equipped to work remotely to handle matters reliably and with our usually precision and efficacy. All remote working will be conducted via virtual private networking to maintain client’s data security and confidentiality. Our normal operating hours will continue.

We extend our well wishes to all at these difficult times.

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The situation on the United Kingdom leaving the European Union develops daily. The original exit day of March 29, 2019 has now been extended until April 12, 2019.

European Union Flag

There is provision for further extension to May 22, 2019 if the UK government approves the EU withdrawal agreement following two previous defeats in parliament.

In the meantime, the UK government is deliberating on what, if any, agreement with the European Union has majority support. As of today, the United Kingdom leaves the European Union on April 12, 2019 unless there is positive action taken by the UK Parliament and the European Union to delay exit day further.

European patents and European patent applications

European patents and applications are unaffected. The European Patent Organisation is an intragovernmental organisation. It is not part of the European Union. The United Kingdom remains a contracting state of the European Patent Convention. No changes there.

European Union registered trade marks

Any EU trade mark registrations which are already registered on April 12, 2019 (or exit date if that is later) will no longer cover the United Kingdom. They continue in the EU 27 member states excluding the United Kingdom.

The United Kingdom will automatically create an equivalent clone UK registered trade mark without cost. The UK trade mark will inherit all of the characteristics of the parent EU registered trade mark but will be effective in the United Kingdom only. Thereafter, it will have an independent life from the equivalent EU registered trade mark and will be subject to separate payment of renewal/maintenance fees at the UK trade marks office.

For existing clients we will automatically open a file, enter the details into our database, enter the renewal dates and add the new UK trade mark rights to your portfolio listing.

For European Union registered trade mark applications which are pending on exit day, these will continue as EU 27 registered trademark applications, i.e. excluding the United Kingdom. If you have a pending EU trade mark application, we recommend applying for corresponding protection in the United Kingdom. There are various options for doing this. Please contact one of our Chartered and European trade mark attorneys for further advice.

European Union registered designs (registered Community designs)

The position is broadly the same as for trade marks. Existing registered Community designs continue as normal but covering the remaining EU 27 member states. For every registered Community design which is already registered on April 12, 2019 or actual exit day if it occurs later, the UK patent office will create an equivalent UK registered design with the same scope of rights, term and filing date as the corresponding registered Community design without charge.

For existing clients we will automatically open a file, enter the details into our database, enter the renewal dates and add the rights to your portfolio listing.

For any registered Community designs which are still pending on exit day, these will proceed through to registration for the EU 27 states only excluding the United Kingdom. An equivalent UK registered design will not be created automatically. However there will be a run-off period after exit day where you will have the chance to file a corresponding UK registered design application.

We shall advise clients individually if they have a pending EU registered design application on exit day.

EU unregistered design right

This right has a maximum term of 3 years from the date on which the design was first made available to the public within the Community. The UK government has pledged to create a corresponding equivalent UK effective right having the same scope and term as the EU right. Unregistered rights are created automatically without charge. The corresponding UK right is also created automatically without charge.

There is no registration system because it is an unregistered right.

If you would like any specific advice on unregistered design rights in the European Union or the United Kingdom please contact one of our attorneys.

Other EU rights

For advice on other EU rights including supplementary protection certificates, plant breeder rights, copyright, database rights, as a general position, the United Kingdom government has pledged to create equivalent UK effective rights having the same scope of protection and term as the original EU effective right.

UK equivalent clone rights - general

The legislation for passing of the UK effective rights of comparable scope to the EU rights has not yet been passed into the UK law. It is a UK government promise. The legislation has been written and is ready to come into force as soon as it is passed by UK Parliament.

The UK government has pledged to create the above rights, but there is no guarantee that the present UK government will still be in power on exit day. A new UK government, whilst likely to maintain the pledge to create the new rights, is not bound to do so.

If you would rather not take a chance on the automatic creation of new UK rights equivalent to EU rights, then you may wish to apply for an equivalent UK right now in order to give certainty. Please contact one of our patent and trade mark attorneys for further advice.

The groundwork has been done for seamless continuation of existing intellectual property rights in the UK and Europe.

Franks & Co continues to prepare our clients for the United Kingdom’s exit from the European Union. We have made arrangements to continue to represent our clients before the European Union intellectual property office.

Article by Robert Franks robert.franks@franksco.com

Article Published March 28, 2019