How does Brexit affect your IP rights?

UDL Intellectual Property

30th November 2020

By Jonathan Morris, Senior Patent Attorney

The UK’s exit from the European Union has implications for UK companies that own EU-wide intellectual property rights. The headline is that, from 1 January 2021, EU Trade Marks and Registered Community Designs (RCDs) will no longer be valid in the UK. The good news is that European patents are unaffected.

If you own EU trade mark or design rights, here’s what you need to consider.

 

Pending EU applications

Pending EU trade mark and design applications (those not published as of 1 January 2021) will not be automatically replaced by comparable UK rights. New corresponding UK applications must be filed within nine months of 1 January 2021 in order to retain the EU filing date.

It may be advisable to file any corresponding UK applications to pending EU trade marks or pending registered community designs (RCDs) now if your EU rights are unlikely to be registered by 31 December 2020, to ensure that there is no gap in protection.

 

Registered EU rights

Existing EU trade mark and design registrations will be immediately and automatically replaced by comparable, independent UK rights, which will have to be renewed separately.

While this process should be straightforward, there may be complexities around issues such as licences or security interests relating to your EU rights. There may also be some circumstances where you may not want your EU rights to be replicated in the UK.

 

International registrations

Protected EU designations of international trade marks and protected international (EU) designs will be immediately and automatically replaced by comparable UK rights, which will be recorded on the UK Registers. These new UK rights must be assigned, licensed and renewed separately from the original international registration.

The automatic creation of UK rights will not apply to EU designations of international trade marks or designs that have not yet been protected by the EUIPO as of 1 January 2021. You may claim priority from the earlier date of the international trade mark or international design if you apply for a UK equivalent within nine months of 1 January 2021.

 

After 1 January 2021

All replacement comparable UK rights will have to be renewed separately to their EU counterparts. It is expected that the UK Intellectual Property Office will change the Address for Service rules so that applicants will require a representative in the UK.

If you need support with your Brexit preparations, get in touch with me at jpm@udl.co.uk.

Find out more about your IP rights after Brexit on our dedicated webpage.

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