Intellectual Property: How Brexit Has Affected Rules

As of the 1st January 2021, the UK is now separate from the EU IP system, and the laws around intellectual property in the UK have changed accordingly.

Here is a summary of the main changes for businesses.

Rules on representatives and address requirements

From 1st January, UK attorneys cannot represent clients on new applications or proceedings at the EU Intellectual Property Office.

While they can still represent their clients in applications or proceedings started before the end of the transition period, UK trade mark owners will need to appoint an EEA attorney in order to be represented in new applications or proceedings before the EUIPO.

Additionally, the IPO are considering changes on the rules on correspondence addresses that remove references to the EEA.

Changes to IP rights

Trade Marks

On the 1st January 2021, the UK Intellectual Property Office have created a comparable UK trade mark for every registered EU trade mark.

This retains all its original records, including filing date and seniority dates, but has the same legal status as if it had been applied for under UK law.

Therefore, if your EU trademark has already been registered, there is no need for you to file a separate application in the UK.

On the other hand, if your application for a EUTM hasn’t been registered at the end of the transition period, you have a 9-months period to apply in the UK, where the application fee is payable and the application is now subject to UK law requirements.

• EU trade mark protection and comparable UK trade marks from 1 January 2021

Designs

The same process is applied to every Registered Community Design (RCD): the IPO have registered every design in the UK, at the end of the transition period.

Once again, is fully equivalent to designs registered under UK law, but retains their original details.

Applications for designs not yet registered have a 9-months window to be registered in the UK, with the application fee fully payable.

More information is available on the GOV.UK website.

International Trade Marks and Designs

International trade marks and designs designating the EU continue to have protection in the UK under the terms of the Withdrawal Agreement.

On 1st January 2021, the IPO will create:

• ‘a comparable UK trade mark for every international trade mark (EU) that is protected at the end of the transition period’
• a re-registered UK design for every international design (EU) that is protected at the end of the transition period

Where an international trade mark or design designating the EU has been applied for, but is not yet protected, the holder has a period of nine months to apply for the same right as a UK trade mark or design. UK application fees is payable, and the application is subject to UK examination requirements and for trade marks publication requirements.

For information on renewals, opt out process and numbering as well as more detail on subjects covered in this section please refer to our business guidance.

Unregistered Designs

Unregistered Community Designs that arise before the end of the transition period is still protected in the UK for the remainder of their 3-year term.

A Supplementary Unregistered Design (SUD) is available in the UK from 1st January 2021, they offer similar protection as Unregistered Community Designs, but for the UK only.

Businesses disclosing Unregistered Design are advised to read the full guidance and decide whether to disclose their designs in the EU or in the UK to obtain protection in their main market.

Disclosing an Unregistered Design in another country may destroy the novelty of the design if seeking SUD rights in the UK afterwards.

Patents

You can apply for a European patent through us or direct to the European Patent Office (EPO) to protect your patent in more than 30 countries in Europe, using the (non-EU) European Patent Convention (EPC).

As the EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK are also unaffected.

European patent attorneys based in the UK continue to represent applicants before the EPO. See the notice on the EPO website news story for further information.

Supplementary Protection Certificates (SPCs)

SPCs are granted as national rather than EU-wide rights, so UK right-holders can continue to apply for an SPC by submitting an application to the IPO

However, due to the Northern Ireland Protocol, you need to check whether your authorisation is valid for the whole of the UK, or just Northern Ireland or Great Britain.

Parallel trade between the UK and the EEA

IP-protected goods are – from 1st January 2021 – subject to both UK and EEA laws separately and independently.

This means that businesses looking to sell IP-protected goods both in the the EEA need to seek the right holder’s consent for parallel export.

The IP rights in goods placed on the EEA market by, or with the consent of the right holder after the transition period continue to be considered exhausted in the UK.

This means that parallel imports into the UK from the EEA are unaffected.

Additional IP rights

Copyright

Since most copyright matters are covered by international treaties, most UK copyright works are still protected in the EU and UK, and the same is true for EU copyright works. This still applies after 1st January 2021.

Cross-border copyright arrangements that are unique to the EU – including cross-border portability of online content services, copyright clearance for satellite broadcasts, reciprocal protection for database rights and the orphan works exception – ended after the transition period.

Geographical Indications

Geographical Indications are considered IP rights, and they apply to products with characteristics that are typical of a certain origin region.

The Department for Environment, Food and Rural Affairs (DEFRA) has set out guidance for Geographical Indications, with new schemes enforced on 1st January 2021.

These schemes are designed to be fully compatible with the wider framework from the Intellectual Property Office.