06 February 2020

Brexit - practical considerations for IP owners

This article was written by Cate Nagy.

Last Thursday 30 January 2020 the Council of the European Union ratified the “Brexit” Withdrawal Agreement, paving the way for the UK to leave the EU, which it did the following day. 

The UK has now entered a transition period, which, as things stand, will run until 31 December 2020.  During the transition period, there will be no changes to the operation of EU Law as it currently applies to European Union Trade Marks (EUTMs), Registered Community Designs (RCDs) and Unregistered Community Designs.

Legal implications for IP post-Brexit

Intellectual property owners seeking to protect and enforce their rights in the EU and UK need to be aware of the following consequences which will arise when the Brexit transition period concludes on 31 December 2020:

  • The UK IPO will convert any existing rights in EUTMs and European Designs into comparable UK rights, which will take full effect on 1 January 2021.  This conversion will not affect existing EU IP rights, except to the extent that those EU rights will no longer be enforceable in the UK.
  • The equivalent UK rights will have the same status as if applied for and registered under UK law. EUTMs and RCDs will maintain their original protections and priority dates.  
  • For applications for EUTMs or RCDs that are pending as at 1 January 2021, there will be a 9-month priority window during which applications can be made to the UK IPO for UK-equivalent rights.  If no such application is filed, the trade mark or design may proceed to registration in the EU but will not be protected in the UK.
  • From an enforcement perspective, pan EU injunctions will no longer cover the UK.  Separate enforcement action may need to be commenced in both the EU and the UK.
  • The patent system will remain largely unaffected by Brexit.

What should you do now?

Taking into account these broad ramifications, it is recommended that companies interested in protecting their IP rights in the EU and UK post-Brexit undertake the following steps:

  • Companies with currently registered EUTMs and RCDs do not need to refile for equivalent registration in the UK.  Equivalent UK registrations will be created automatically.
  • Companies with applications for an EUTM or RCD pending as at 1 January 2021 should make an application to the UK IPO for UK-equivalent rights within the 9-month grace period, assuming that they wish to secure protection in the UK in addition to the EU.
  • Companies intending to file new applications for EUTMs and RCDs during 2020 should obtain legal advice as to whether to dual-file in the EU and the UK, given that EUTMs and RCDs pending at the end of the transition period will need to re-filed in the UK in any event.
  • From 1 January 2021, separate applications to register a trade mark or design must be filed both in the EU and the UK in order to secure the same geographic scope of protection currently conferred by EUTMs and RCDs.
  • Legal advice should be obtained in respect of any pending oppositions or cancellation actions before EUIPO and the potential need for the commencement of parallel actions in the UK.
  • Legal advice should be obtained in respect of any EU Application for Action (Customs Notice) to determine whether this should be re-filed.
  • Companies should undertake a review of their IP licence and coexistence agreements to determine potential implications arising from references to the “EU” in those agreements.

It is also pertinent to note that there may be good reasons to hold trade mark registrations in the EU together with overlapping national registrations (which, for the time being, would include UK registrations).  Our earlier IP Whiteboard article at https://ipwhiteboard.com.au/advantages-applying-uk-national-trade-marks-addition-community-trade-marks/ provides a helpful summary in this regard.

If you would like further advice on how Brexit may affect the protection and enforcement of your IP in the EU and UK, please get in touch with one of KWM’s IP experts.

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