On 31 January 2020, the UK left the EU and entered a transition period, which ends on 31 December 2020.
It has been very much ‘business as usual’ during 2020. However, from the 1 January 2021 the impact of Brexit will change the landscape of IP rights and portfolios with immediate effect.
With this in mind, the owners of UK, EU and WIPO (International: Madrid or Hague) IP rights need to be aware of the changes, so that they can ‘put their house in order’ before 31 December 2020 and formulate a strategy for retaining appropriate and adequate protection going forward.
Below is a brief overview of the impact of Brexit on IP rights.
From the 1 January 2021, EU trade marks and the EU designations of International trade mark registrations will no longer cover the UK.
The EU trade marks and the EU designations will go forwards covering the post-Brexit 27 EU Member States.
For each registered EU trade mark, on 1 January 2021 an equivalent ‘comparable’ UK trade mark will be created on the UK trade marks register. This will happen automatically (although there are opt-out provisions), without cost and with as little administration as possible.
The comparable, and fully independent, trade mark will retain the original filing, priority and/or UK seniority dates. To all intents and purposes, it will be treated as having been applied for as a national UK trade mark.
Pending EU trade marks will no longer cover the UK after 31 December 2020. The owner will need to refile in the UK, paying the relevant UK IPO fees, and will have a window of nine months for doing so if the UK filing is to maintain the filing, priority and UK seniority dates recorded against the corresponding EU application.
For each International trade mark designating and protected in the EU on 31 December 2020, an equivalent comparable UK trade mark will be created on the UK register, as described above.
For each International trade mark designating and still pending protection in the EU on 31 December 2020, the owner will need to refile in the UK, paying the relevant UK IPO fees, and will have a window of nine months for doing so if the UK filing is to maintain the filing, priority and UK seniority dates recorded against the corresponding EU application.
Registered community designs and the EU designations of International design registrations will no longer cover the UK after 31 December 2020.
Registered community designs and the EU designations will go forwards covering the post-Brexit 27 EU Member States.
For each Registered community design (RCD), on 1 January 2021 an equivalent ‘comparable’ or ‘re-registered’ UK design (UKRD) will be created on the UK register. This will happen automatically (although there are opt-out provisions), without cost and with as little administration as possible. The re-registered, and fully independent, UKRD will retain the original filing, priority and renewal dates. To all intents and purposes, it will be treated as having been applied for as a national UK registered design.
Pending RCDs will no longer cover the UK after 31 December 2020. The owner will need to refile in the UK, paying the relevant UK IPO fees, and will have a window of nine months for doing so if the UK filing is to maintain the filing and priority dates recorded against the corresponding RCD application.
For each International design designating and protected in the EU on 31 December 2020 an equivalent re-registered UK design will be created on the UK register, as described above.
For each International design designating and still pending protection in the EU on 31 December 2020, the owner will need to refile in the UK, paying the relevant UK IPO fees, and will have a window of nine months for doing so if the UK filing is to maintain the filing and priority dates.
Unregistered community designs which exist following disclosure of the design within the EU on or before 31 December 2020, will continue to be protected as a ‘UK continuing unregistered designs’ (CUDs) and enforceable in the UK for the remaining period of protection of the right (3 years from the point the design is first disclosed or made available to the public).
To qualify for an unregistered community design as a consequence of the disclosure of the design after 31 December 2020, it seems that the first disclosure will need to be made within the EU. First disclosure in the UK probably will not qualify.
Designs which are disclosed in the UK, or another qualifying country, from 1 January 2021, will be protected in the UK as a new right: a ‘supplementary unregistered design’ (SUD). Note: first disclosure in the EU will not establish a supplementary unregistered design. However, it may destroy the novelty in the design, should its owner later seek to rely on UK unregistered rights.
UK design right will continue after 1 January 2021 and will function alongside UK ‘continuing’ and ‘supplementary’ unregistered designs.
It will continue to provide protection for the shape and configuration of 3-dimensional articles for up to 15 years from the end of the year in which the design was first recorded or a corresponding article was first made.
Current law states that a UK design right can be established in the following circumstances:
- by an individual who is resident in the EU;
- by a business formed under the laws of an EU member state; or
- where first disclosure of the design occurs in an EU member state
This means that activity inside of the EU but outside the UK can be sufficient for establishing UK design right.
The qualifying criteria for UK design right will change on 1 January 2021. Qualification for the right will be limited to:
- people resident in the UK or a qualifying country; and
- businesses formed under the laws of the UK or a qualifying country
Where qualification is a result of first marketing, you will need to have disclosed your design in the UK or a qualifying country.
UK copyright works (such as books, films and music) will still be protected in the EU because of the UK’s participation in various international treaties on copyright.
For the same reason, EU copyright works will continue to be protected in the UK.
This applies to works made before and after 1 January 2021.
However, there will be some differences between UK and EU copyright laws and their application/interpretation after the end of 2020, in particular due to the fact that the UK will no longer be bound by decisions of the CJEU.
Existing European Patents and pending European Patent applications will not be affected by Brexit.
Patents covering the UK will continue to be granted both by the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO).
The UK government has announced that it will no longer participate in the anticipated Unitary Patent System.
UK citizens, residents, and businesses will not be eligible to receive or hold database rights in the EEA for databases created on or after 1 January 2021.
UK owners of databases created on or after 1 January 2021 will need to consider whether they can rely on alternative means of protection in the EEA – for example licensing agreements, or copyright, where applicable. Copyright protection for databases in the UK and EEA will not change after 1 January 2021.
UK legislation will be amended so that only UK citizens, residents, and businesses are eligible for UK database rights for databases created on or after 1 January 2021.
Trade Secrets Directive
Historically, confidential information has been dealt with by way of common law in the UK. The Trade Secrets Directive was implemented into UK law on June 2018 by the Trade Secrets (Enforcement etc) Regulations 2018. The Regulations adopt the definition of "Trade Secret" used in the Directive, but otherwise make clear that, notwithstanding the Directive, the existing common law of confidential information remains unchanged. From the 1 January 2021, although the UK must continue to follow CJEU case law in force on 31 December 2020, it will not be bound to follow future CJEU decisions. As such, we do not yet know the extent to which post-Brexit CJEU case law will influence the UK Courts.
From 1 January 2021, UK nationals resident, or businesses established, in the UK but not in the EU, will no longer be eligible to hold a .eu domain name.
From 1 January 2021, UK courts will no longer be able to invalidate or cancel EU trade marks or RCDs.
The existing power to obtain, via an EU Court, an EU-wide injunction against infringement of, for example, an EU trade mark will no longer exist after the end of 2020.It will only be possible to enforce UK trade mark and designs in the UK and to enforce EU trade marks and Community designs in EU Member States.
Exhaustion of rights
The UK is currently part of a regional European Economic Area (EEA) exhaustion scheme, meaning that IP rights are considered exhausted (i.e. the owner of the right loses the ability to control distribution and resale) in respect of a product once it has been placed on the market anywhere in the EEA by, or with the permission of the owner of the right.
Rights conferred by an IP right which were exhausted, in the EU and UK, before 31 December 2020 shall remain exhausted in the EU and UK.
Goods placed on the UK market by, or with the consent of, the owner of the IP right after the end of 2020 will no longer be considered exhausted in the EEA. This means that businesses exporting such IP-protected goods from the UK to the EEA will need the IP owner’s consent.
We recommend that businesses consider taking the following actions in preparation for the end of 2020:
- Talk to us – we can make sure you take the right steps at the right time to protect your valuable assets.
- Audit their trade mark and designs portfolio, to identify where comparable trade marks or re-registered rights may not be required and if opt-outs are appropriate.
- Check addresses on the EU register and deal with the recordal of assignments, licences and security interests ASAP. From 1 January 2021, applications will have to be made to both the EUIPO and the UK IPO to update the registers and record transactions.
- Make sure all renewals are up to date.
- Review pending EU trade mark and design applications and, where possible, push for registration before 31 December 2020 (to avoid the time and cost of re-filing an application in the UK), or prepare to file new applications in the UK before the end of September 2021.
- With respect to licences, consider whether the licences will still cover the UK and whether an amendment to the licence is required.
- Review agreements to check, in particular, jurisdiction, governing law and territory clauses; and how principles of exhaustion might impact upon the agreement.
- Consider whether there is trade mark use in the EU/UK; and whether an extension of use to the UK/EU is required.
- In light of the changes to design laws, consider how, when and where a design is first disclosed, in order to establish protection in the UK and the EU. To ensure protection in both territories registration will probably be needed in the territory where first disclosure does not take place.
- From 1 January 2021, any pending trade mark oppositions or cancellation actions before the EUIPO can no longer be based on any UK right (registered or unregistered). New actions against the comparable UK trade marks will need to be brought.
- For those with a pan-European customs notice, filed through UK Customs, a new filing will need to be made via an EU customs authorities and a separate UK filing will be required.
- Check domain name portfolios for .eu domains. If there is scope to remain eligible after 31 December 2020, ensure prompt action to update details on the EURid register. Be especially careful where a .eu domain supports a website and email functionality.