Insight: Brexit and your IP – what you need to know

After several years of debate and negotiation, the UK will finally leave the European Union at midnight on the 31st December 2020. This brings with it some fundamental changes for UK companies with European trademark and design registrations. Robert Games from Albright IP outlines what companies need to know.

First and foremost, although Brexit brings some changes to the IP system, businesses in the UK should keep going with their innovation and product development and should still seek to protect those advancements through patenting, registered designs and trademark registrations.

The tax benefits through Patent Box and R&D are unaffected in the UK, you can still take legal action based on registered and unregistered rights and so your protection strategy should broadly remain unchanged.

So, what do you need to be aware of?

Patents

There will be no fundamental changes affecting EU patents, as the administration for these is governed by the European Patent Office (the EPO), which is not an EU institution.

EU Trade Marks and Designs (EUTM/RCD)

The major changes apply to trade mark and design protection in Europe.

Going forwards, European trade mark and design registrations will not cover the UK.  The result is that businesses that relied on European rights for protection in the UK will now have to make separate registrations and renew them in the UK.

Granted EU Trade Marks and Designs

All granted EUTM/RCD registrations will be ‘cloned’ at the effective date of Brexit i.e. 1 January 2021; with the original filing/priority dates being preserved. By this, a separate parallel UK registration will be created, and the EUTM/RCD will remain in place for each of the 27 territories that will remain within the EU.

Following the above, the cloned UK registration will stand apart from the EUTM/RCD, and the EUTM/RCD will continue to cover the 27 territories that will remain within the EU.

 

Pending EU Trade Marks and Designs

Any EUTM/RCD applications pending at the effective date of Brexit will not be cloned, and will not automatically cover the UK.

Provided steps are taken to re-file at the UKIPO within nine months of the effective date of Brexit, the new UK applications will retain the original filing date/priority date of the EUTM/RCD application. However, they will undergo fresh examination at the UKIPO, and filing fees will be payable on the same basis as any ‘normal’ UK application.

UK unregistered designs

UK and EU businesses currently automatically acquire UK unregistered design protection for the shape of a product, which can last for 10 years from the date of the first product sale in the UK.  However, from midnight on 31^st December, EU businesses will no longer be eligible for this protection as it will only be open to businesses from the UK (in addition to other countries with reciprocal arrangements, such as Hong Kong, New Zealand, and parts of the Caribbean).

EU unregistered designs

Any business receives three years EU protection for all aspects of a new design (excluding features dictated solely by technical function and must fit requirements) from the point of its first disclosure within the European Community. This will still apply, but of course, the UK will no longer be in the EU, and so a disclosure in the UK does not trigger the protection. If you disclose in the UK first, then you risk invalidating EU protection.

My advice is to try and disclose in Europe at the same time as the UK, or very quickly thereafter so that people in the business are not aware of the product in Europe before you disclose there.

You should carefully consider how, when and where you first disclose your designs in order to establish unregistered protection in the UK and the EU. There will be transition provisions for EU design right already in force in the UK, allowing it to effectively continue until the end of the 3 year term.

EU domains

Unless you are an EU/EEA citizen, or your business has a real & effective place of business within the EU/EEA, then you should swiftly set up a new domain i.e. a ‘co.uk’ or a ‘.com’ prior to 31^st December 2020, and migrate to this.

So, what does all this mean?

Well, in a nutshell, EU and UK trade mark and design protection will now be separate. There are some more complex rules for cases with ongoing proceedings, but after 31 December 2020, new European trademark and design rights will no longer cover the UK.

Moving forward, any existing European registrations will be automatically cloned in the UK (to create UK registrations) as EU registrations will cease to be covered in the UK.

Patents, however, will remain unaffected as they are covered by a separate treaty, which, hopefully, will not be repealed.

The newly cloned registrations will become your UK equivalent right and while this will be created freely and automatically there will be renewal fees in the future which will have to be paid separately and budgeted for.

So yes, there will be additional costs, but the cost to UK businesses should not be too great, because usually UK rights are created first, before filing overseas in Europe.  This may mean simply opting out of new cloned rights created in the UK.

When it comes to the automatically created unregistered design protection, you just need to be aware that a disclosure in the UK does not create pan EU protection anymore.

The UK must keep innovating

My message to business is to “keep going” with your strategy of development and protection to remain competitive and keep your foothold on the IP assets within your market.

If in doubt, get in touch and we will explain what needs to be done to maintain your existing rights and moving forwards. Email us at info@albright-ip.co.uk