By Despina Lyons, Paralegal & Trade Mark Attorney
13 February 2020
Well, it finally happened. The United Kingdom has finally managed to extricate itself from the European Union after first voting to do so in June 2016. For nearly 4 years since that initial “Brexit” vote, there has been speculation regarding whether the United Kingdom would really leave the European Union and if so, how the exit would occur in practical terms, and what the practical impacts would be on the myriad of legal frameworks, rights and obligations that applied within the UK and across Europe. These frameworks include UK trade mark rights and EUTM rights, which many of our clients hold. You may recall we promised an update to our original 2016 publication on this subject (see that post here), so here we go.
Is it really happening?
Yes. After a long period of “will they stay or will they go?”, the United Kingdom parliament finally ratified the withdrawal agreement and the United Kingdom formally left the European Union on 31 January 2020. Immediately this changes nothing of practical significance – there will be a 12-month transition period, running until 31 December 2020, during which the ongoing relationship post-transition will be decided and the realities of just how to separate the United Kingdom from the European Union will be finalised. In addition to many practical implications on the day to day lives of citizens of the United Kingdom and the European Union, the Brexit decision also has an impact on existing and future intellectual property rights, including trade marks and designs.
Impact on IP rights
It is important to remember that intellectual property rights, such as trade marks, designs, copyright and patents are territorial, and rights are generally based in and protected in each jurisdiction (copyright is slightly different). If you would like to protect a trade mark in Australia and New Zealand, you would have to file separate applications in each of these countries to obtain registered rights. However, there are some territories which offer unitary protection, a mechanism by which you can apply for an intellectual property right in a number of countries at once by means of a single application. The European Union is a territory that offers unitary protection, and until Brexit a European Union Trade Mark (“EUTM”) covered the UK. Moving forward, post-transition, a EUTM will continue to provide protection in all of the member states of the European Union by means of a single trade mark application, but that will no longer include the UK. Similarly, the European Patent Office offers a European patent which provides protection in all member states and there is also the option of filing a Community Design which offers protection in all European Union member states. Such applications offer clear advantages in respects of efficiency and cost savings.
So, what happens with existing EUTMs and other European unitary rights now? Now that the United Kingdom has left the European Union, we need to consider what happens to these unitary intellectual property rights and what options are available for achieving protection in the United Kingdom.
What happens next
At the end of the transition period, i.e. from 1 January 2021, registered EUTMs will no longer provide protection in the United Kingdom. From this date, the United Kingdom Intellectual Property Office (UKIPO) will automatically create a comparable United Kingdom trade mark for every registered EUTM, ensuring the rights that existed pre-transition/pre-Brexit continue to apply, only in a different form. The new United Kingdom trade mark will be recorded on the United Kingdom Trade Mark Register as a United Kingdom trade mark, it will have the same legal status as if you filed the application directly into the United Kingdom and not as part of a EUTM and it will keep the filing date of the original EUTM. EUTM owners will not have to take any action or pay any fees to ensure this protection, at least until the standard renewal date comes around and the mark requires renewal fees to be paid. Importantly, this automatic transition will occur in respect of EUTMs that are registered by 1 January 2021 only.
If your EUTM is still pending, i.e. it is not registered by 1 January 2021, you will have to apply to the UKIPO to register a comparable United Kingdom trade mark. There will be a period of 9 months to submit an application for a comparable United Kingdom trade mark. Accordingly, the final deadline to apply to register a comparable United Kingdom trade mark based on a pending EUTM will be 1 October 2021. Provided that you apply for the comparable trade mark prior to this deadline, the comparable United Kingdom trade mark will retain the earlier filing date of the EUTM. The usual application fees for filing a United Kingdom trade mark will apply and once filed, the application will be treated the same as a regular United Kingdom trade mark and will be examined under United Kingdom trade mark law.
If you held a pending or registered United Kingdom trade mark prior to Brexit, nothing has changed and your rights are the same as they were before Brexit, subject to United Kingdom domestic law.
Similar to the position with trade marks, at the end of the transition period, i.e. 1 January 2021, if your Community Design is registered it will automatically be converted to a United Kingdom design. These United Kingdom designs will be recorded on the United Kingdom Designs Register and be treated as if they were filed under United Kingdom law. Existing registrations will retain the registration and application dates of the Community Design. No additional costs will be incurred, and you will not have to take any action for the conversion to take place. Registered Community Designs will be converted automatically.
If your Community Design is pending on 1 January 2021, you will have a period of 9 months to apply to register a United Kingdom design. The deadline to file an application to register a comparable United Kingdom design is 1 October 2021. Provided that you apply for the comparable design by this deadline, the comparable United Kingdom design will retain the earlier filing date of the Community Design. The usual application fees for filing a United Kingdom design application will apply and once filed, the application will be treated the same as a regular United Kingdom design and will be examined under United Kingdom law.
Since patents are managed by the European Patent Office (EPO) and the EPO is not a European Union agency, the United Kingdom leaving the European Union will not affect the European patent system. Accordingly, registered and pending European patents will be unaffected.
If you have registered EUTMs or Community Designs, you will not have to take any action. We will advise you in due course with the details of your automatic comparable United Kingdom rights.
If your EUTMs or Community Designs are pending, we will contact you prior to the 9-month deadline to seek instructions and provide information and cost estimates for filing comparable United Kingdom rights.
This change will also impact on decisions regarding future international filing strategies and we can provide further advice on a case by case basis.