So, it’s finally happening. At 11pm (UK time) tonight, 31 January 2020, the UK is leaving the EU – whether or not Big Ben bongs to ring out the changes. And what changes will there be on the IP front?
The short answer, in the short term, is: absolutely none.
EU law will continue to operate in the UK during the transition period, exactly as it currently does. The transition period will be from 1 February 2020 – 31 December 2020 unless an extension is obtained, which the Prime Minister has promised will not happen. The IP system will therefore continue as it currently does in the UK and the EU until at least the end of this year, without any disruption or changes.
EU Trade Marks and Registered Designs:
In the background, the UK IPO will be working through the year to be ready to “clone” almost 1.4 million EU trade marks (EUTMs) and 700,000 Registered Community Designs (“RCDs”) immediately at the end of the transition period, so that the owners will retain comparable rights in the UK. These “cloned” rights will come into effect on 1 January 2021 (unless the transition period is extended). If you own an EUTM registration on 31 December 2020, you will own an EUTM and a “cloned” UK registration on 1 January 2021, without any action required on your part. The UK registration will have the same filing date and details as the EUTM. The same applies to an RCD.
If you have an EUTM or an RCD application which has not yet been registered at the end of the transition period, you will have a period of 9 months to apply for the same protection in the UK.
International Registrations designating the EU:
During the transition period, if you designate the EU under an International Registration for a trade mark or a design, the EU designation will continue to extend to the UK. If protection is granted in the EU prior to the end of the transition period, there will continue to be protection under the International Registration in the UK afterwards. The UK IPO is still working with WIPO on the appropriate mechanism to ensure this continued protection and to determine what will happen in cases where protection in the EU has not been confirmed by the end of the transition period.
Unregistered Community Designs:
The UK will remain part of the EU unregistered Community Design system until the end of the transition period. The Withdrawal Agreement provides that unregistered Community Designs which arise before the end of the transition period will continue to be protected in the UK for the remainder of their 3-year term. Designs disclosed in the UK after the end of the transition period may be protected in the UK through the supplementary unregistered design.
Brexit will not affect the current European patent system. The European Patent Office is not an EU agency and the European Patent Convention is not an EU treaty. Accordingly, there will be no changes in relation to patents at the end of the transition period.
Reciprocal protection for copyright works between the UK and the EU is assured by international treaties, independently of the UK’s relationship with the EU. Current cross-border copyright arrangements which are unique to EU Member States will continue to apply to the UK until the end of the transition period – this includes reciprocal protection for databases. The Withdrawal Agreement provides that any database rights that exist in the EU and the UK at the end of the transition period will continue to be recognised in both territories for the remainder of their term. Whether any cross-border arrangements will otherwise continue after the end of the transition period will depend on the future relationship that is negotiated between the UK and the EU.
Exhaustion of rights:
Currently, exhaustion of rights occurs in the UK when IP-protected goods are put on the market by or with the permission of the owner of the IP right anywhere in the EEA (which includes all EU countries and also Iceland, Liechtenstein and Norway). Equally, when an IP right owner puts goods on the market in the UK, exhaustion of rights occurs throughout the EEA. Exhaustion of rights means that the IP right holder cannot then prevent the movement of those goods anywhere within the EEA. The UK and the EU have agreed in the Withdrawal Agreement that this will not change until the end of the transition period.
Rights of representation before the EUIPO:
UK legal representatives will continue to have the right to represent clients before the EUIPO until the end of the transition period.
Reddie and Grose has offices in Munich and the Hague and will be able to continue to represent clients in all trade mark and registered design cases before the EUIPO.
For the present, it will essentially be business as usual in the IP world so far as the UK is concerned, even after the clock has struck (or not struck) 11pm tonight. If you have any questions, do not hesitate to get in touch.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.