05/02/2021
The UK stopped being a member of the European Union at 23:00 GMT on 31st January 2020. The EU and UK entered a transition period, as per the terms of the Withdrawal Agreement (sometimes called the implementation period). The transition period ended on 31st December 2020 and cannot be extended beyond that date. Therefore the UK’s final exit from the EU was 23:00 GMT on 31st December 2020.
In the world of trade marks and design rights, pan-EU IP protection has been available via the EUIPO since 1996. At the moment they cover the UK. But what will happen after Brexit?
Concrete advice is hard to come by when the news changes regularly, but we attempt to address the issues our clients are raising. Reddie & Grose will be monitoring events and updating you through newsletters, Twitter and LinkedIn. We will be monitoring the cases of all of our clients and providing tailored alerts as and when we find out that something definite happens.
The main concern for pan-EU rights holders who maintain an interest in the UK is the potential loss of rights covering the UK post-Brexit. However, the UK Government has confirmed that it will take steps to ensure that EU rights holders maintain the current protection for these rights via the creation of equivalent, “cloned” UK rights sitting alongside the pan-EU rights. The actions required are different depending upon whether the EU right in question is registered or is still pending at the time of Brexit. The UK Government has confirmed the creation of these cloned UK rights even in the event that the UK leaves the EU without an Agreement.
So it’s business as usual and minimal disruption … for the time being.
What will happen to EU Registered Rights at the time of Brexit?
The UK Government has said it will ensure that the rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by creating an equivalent UK trade mark or UK design. The equivalent, cloned right will be created automatically and will not incur any official fees until next due for renewal. The renewal date will be the same as the parent EU right.
What will happen to EU Applications still pending at the time of Brexit?
Proprietors of EU Trade Mark and EU Community Design applications which are ongoing at the date of Brexit will be given a nine month window in which they will be able to refile with UKIPO under the same terms for a UK equivalent right without losing any dates. The re-filed applications will use the normal application process for registered trade marks and registered designs in the UK but will maintain the filing / priority / seniority date of the original EU right. However, those affected will not receive any notifications from the UKIPO inviting them to re-file in the UK.
Reddie & Grose will notify clients of the option of filing UK applications at the appropriate point. We’re also looking out for applications which can be fast-tracked through before Brexit kicks in to ensure that the cloned UK right is automatic and free.
EU applications filed after Brexit becomes effective
Any EU Trade Marks or Community Designs registered after 31 December 2020 will not extend to the UK. The same will apply to any EU designations of international trade marks.
Some of the key considerations for EU rights holders
Should I file new applications for trade marks & designs in the UK now as well as the EU, or am I spending money I don’t have to?
It is probably worth parallel filing, rather than going through the cloning process for pending EU applications, which require UKIPO fees as if they were fresh applications. It is unlikely that an EUTM application filed now is going to be granted by 31 December 2020 (and therefore give rise to the free clones available for the granted EU registrations). The UK fees are not that significant anyway and filing a UK application now removes the uncertainty and the potential delays associated with processing of the cloned UK rights.
If my portfolio is UK-heavy, what can I do to shore up protection against third party applications filed in the EU?
Post-Brexit, you can’t use a UK TM to oppose a third party trying to secure protection in the EU (which now excludes the UK). Unregistered rights in the EU vary. It might not be a bad idea to consider filing EUTMs for important marks. There is no requirement to have an intention to use the mark in the EU at the filing date.
Should I rush to settle trade mark oppositions before 31 December 2020?
If they are on the brink of settlement, it would not be a bad idea to settle to secure EUTM registration and therefore get automatic and free UK clones at Brexit date. But the fees in the UK are not so great to suggest that this should promote compromises you wouldn’t otherwise agree to.
If the clones are created on the day after Brexit takes effect is that going to have an impact on my renewals budget?
The short answer is ‘yes’. Recent guidelines from the UKIPO confirm that the cloned right will need to be renewed separately if the relevant 10 year anniversary date falls after Brexit, even in cases where the corresponding EUTM registration has already been renewed early at the EUIPO prior to exit day. We will be reviewing cases on our records, even if we are not monitoring the renewal deadlines for you. The UK Government has made provisions for a six month transitional window to avoid the shock of having to pay a bundle of renewal fees the day after Brexit.
Can I continue to use Reddie & Grose for all my UK and EU advice?
Yes, please do. We are able to give a seamless transition into the protection of all IP rights in the UK and throughout the EU after Brexit.
Does this affect patents?
No. European patents are granted by the EPO which is separate from the EUIPO and the EU. Nothing changes for patents.
What about the new Unified Patent Court?
It appears that the UK will not play any role in the UPC system. Please see our update here.
There are other issues that may require consideration for pan-EU IP rights holders. Here is the start of a list we will add to as things come up.
Infringement and enforcement (and where to bring actions)
The UK High Court will cease to be an EUTM or RCD Court after the UK finally leaves the EU. It will be necessary to bring actions in the UK Courts based on UK rights to prevent UK infringement. Decisions of EUIPO and CJEU will also no longer cover the UK.
Exhaustion of Rights
The UK will continue to recognise the EEA regional exhaustion regime. Putting goods on the market in the EU will mean that the trade mark rights are exhausted in the UK.
However, following the end of the transition period and absent any agreement with the EU, putting the goods on the market in the UK will not exhaust the IP rights in the EEA.
Owners of UK IP rights will not be able to prevent parallel imports from the EEA, as the UK will no longer be a Member State, but owners of rights in the EEA will be able to prevent parallel imports from the UK. It is therefore very important that parallel importers review whether they will need the EEA-based IP rights holder’s permission to export goods to the EEA post-Brexit.
It is expected that the final position on exhaustion will mirror any agreement on the future trading relationship between the UK and EU. Therefore, although the position as it stands is as described above, it is certainly conceivable that this will not be the final position on 31 December 2020. We are continuing to monitor the position and will provide updates as soon as these become available.
Licenses and other contractual arrangements
For business-critical agreements, there may be benefit in review for possible re-negotiation or a simple revision to make it clear that they take into account that the UK is no longer a Member State of the EU. For many though this is likely to be viewed as unnecessary because at the date of execution of the agreement, the intention was to cover the UK as then part of the EU. For all agreements now being drafted, parties may need to consider questions relating to definitions of territory and jurisdiction.
For additional information on these and other issues, please read on to our FAQ section.
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.
