Intellectual Property Rights and Brexit

Intellectual Property (IP) rights in the United Kingdom have always been heavily intertwined with European Union (EU) law. Most businesses deal with IP on an international basis and the majority of UK IP legislation has been directly transposed from EU law. This practice note considers the implications of the UK’s departure from the EU for UK IP rights going forward.

1. EU trade marks (EUTMs)

As of 1 January 2021, the UK Intellectual Property Office (UK IPO) will automatically create a ‘comparable UK trade mark’ for every registered EUTM. The new comparable trade marks are free and will:

• be recorded on the UK trade mark register;
• have the same legal status as if they were applied for and registered under UK law;
• keep the original EUTM filing date;
• keep the original priority or UK seniority dates; and
• be fully independent UK trade marks which can be challenged, assigned, licensed or renewed separately from the original EUTM.

The comparable trade mark holders will not receive a UK registration certificate, but details regarding the new trade marks will be visible on the UK IPO website.

National UK trade marks will be unaffected and UK businesses will still be able to own existing EUTMs and apply for new ones (however the territorial coverage of EUTMs will no longer include the UK and thus protection will be limited to the remaining EU Member States).

Pending EUTM applications

Businesses, organisations or individuals that have pending applications for EUTMs which are not registered at the end of the transition period will have a period of nine months from 1 January 2021 to apply for a corresponding UK trade mark. In this case, UK application fees will be payable and the application will be subject to UK examination and publication requirements. The initial date of the designation of the EU will be preserved.

EUTM renewals 

Once a comparable UK trade mark is created, a separate renewal fee will apply for both the comparable UK trade mark and the existing EUTM. Fees must therefore be paid to both the UK IPO and the European Union Intellectual Property Office (“EUIPO”) accordingly.

EUTMs which have expired before 1 January 2021 

A comparable UK trade mark will also be created where an EUTM:

• has expired within the six months prior to 1 January 2021; or
• has not been subject to a late renewal action at the EUIPO and is still within its six-month late renewal period.

In the above scenarios, the comparable UK trade mark will hold an “expired” status and its continued effect in the UK will be dependent upon the late renewal of the corresponding EUTM at the EUIPO. Where the EUTM is subsequently renewed as a late renewal, the comparable UK trade mark will automatically be renewed in the UK and no renewal fees will need to be paid to the UK IPO.

If the EUTM is not renewed at the EUIPO, the comparable UK mark will be removed from the UK register upon the expiry of the corresponding EUTM’s late renewal period.

EUTMs due expire within six months of 1 January 2021 

Where the comparable UK trade mark is due for renewal in the six months after 1 January 2021, a renewal reminder from the UK IPO will be sent to the holder on the renewal date (or as soon as possible thereafter). The registered holder will be given another six months from the date of the letter to renew the right and no late renewal fee will be charged by the UK IPO during this six-month period.

Opting out of comparable UK trade marks

A registered EUTM holder may opt out of holding a comparable UK trade mark as long as the comparable UK right has not already been used in the UK. For example, it must not have already been assigned, licensed or been the subject of an agreement or litigation. To opt out, a notice must be submitted to the IPO providing the EUTM number and details of anyone with an interest in the EUTM.

The World Intellectual Property Organization (“WIPO”) System

The WIPO International Trademark System (also known as the “Madrid System”) is a convenient and cost-effective solution for registering and managing trademarks worldwide through one centralized system. Applicants may file a single application and pay one set of fees to apply for protection in up to 123 countries.

The UK is a contracting party to the Madrid Protocol and therefore UK nationals or legal entities will continue to be entitled to file WIPO international trade marks. In order to file an international application under the Madrid System, applicants must have already registered or applied for a mark in the applicant’s Office of Origin”, who will in turn certify the international application and forward it to WIPO.

2. IP Litigation and EU Court of Justice case law

UK courts will no longer be able to make references to the Court of Justice of the European Union (CJEU) for interpretation of IP legislation and other EU law that is retained in UK legislation. Any pending references will, however, remain before the CJEU until resolution.

UK courts will not be required to follow any CJEU judgments given after 31 December 2020, although they may take CJEU case law into account if they choose to.

UK courts will no longer be able to adjudicate on EU trade marks or designs (except in ongoing proceedings where remedies granted by the court will apply to the comparable UK rights only) and will not be able to issue EU-wide injunctions.

3. Other IP rights

Domain Names

Businesses established in the UK (but who do not have an EU presence) and UK resident individuals are no longer eligible to apply for new .eu domains now that the transition period has ended. Any existing .eu domains will be subject to withdrawal and revocation.

Designs

UK registered designs (and for UK-based businesses, UK unregistered design rights too) remain unaffected by Brexit, however their EU counterparts (Registered Community Designs and Unregistered Community Designs) will no longer give protection in the UK after the end of the transition period.

New re-registered UK design rights will be created for every EU design that is protected at the end of the transition period and these will function in a similar way to the new comparable trade marks.

Copyright and related rights

There will be relatively few changes to UK copyright law given its national and territorial nature. Most UK copyright works will still be protected in both the UK and the EU due to the UK’s continued participation in the international treaties on copyright.

Current cross-border copyright arrangements unique to EU member states will, however, stop at end of the transition period. These include cross-border portability of online content services, copyright clearance for satellite broadcasts, reciprocal protection for database rights and the orphan works exception.

Database rights

UK citizens, residents and businesses will no longer be eligible to receive protection for newly created databases in the EEA after the end of the transition period. However, databases already protected in the EEA at the end of the transition period will continue to have protection in the EEA for the rest of their standard duration. The UK will introduce its own version of database rights from 1 January 2021 for new databases created by UK citizens, residents or businesses, but such rights will only provide of protection within the UK.

Patents

Brexit will have minimal effect on patents in the UK, as the UK will remain part of the European Patent Organisation (“EPO”) which is not an EU institution. Existing European patents covering the UK will therefore be unaffected and new European patents can be applied for through Gov.uk or directly through the EPO using the (non-EU) European Patent Convention (EPC).