What will happen to Intellectual Property Rights at the end of the Brexit transition period?

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09 October, 2020

Coronavirus has undoubtedly dominated the headlines over the last few months, but intellectual property (IP) owners are encouraged to not forget that the Brexit transition period comes to an end at 23:00 on 31 December 2020, and this will result in changes which owners of IP should be aware of.

The UK formally left the EU on 31 January 2020, however by virtue of the 11-month transition period which has followed, EU law has continued to apply domestically throughout the UK. Although once the transition period is over and a new body of UK law, known as retained EU law, will apply, a primary aim of the transition period in respect of IP is to mitigate any loss of IP rights which would otherwise follow as a result of Brexit.

Trade marks:

The changes which will occur to trade marks at the end of the transition period are reflected in the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019. Under the Regulations, owners of UK-registered trade marks will be unaffected by the end of the transition period, however from 1 January 2021, the territorial coverage of EU trade marks (EUTMs) will no longer include the UK. Nevertheless, the UK government has ensured that those who have EUTMs in the UK and would lose UK protection, will automatically receive alternative UK protection on 1 January 2021. Such owners will receive 'comparable UK trade marks'.

It is important to note that any applications for EUTMs which are still pending at 23:00 on 31 December 2020 will not receive the comparable UK trade mark upon its' registration. However, such applicants will have a 9 month window in which to apply for a corresponding UK trade mark.

To ensure that the protection provided is the same as would have been provided by the EUTM, comparable UK trade marks will have the same filing date, priority and UK seniority as the EUTM.

Designs:

The impact of the end of the transition will have a similar impact on designs as it will for trade marks. UK design rights designs held by UK-based businesses will be unaffected by the end of the transition period however, UK Registered and Unregistered Community Designs, which are EU design rights, will no longer give protection after 31 December 2020.

Again, the UK shall be providing automatic protection in the UK for those who will lose Community Design protection in the UK. Further, applications for Registered Community Designs which are still pending at the end of the transition period will not be automatically turned into applications for the comparable UK re-registered design and holders of the pending applications will have 9 months after the transition period ends to apply for a corresponding design.

Holders of existing Unregistered Community Designs will automatically receive continuing protection in the UK via a Continuing Unregistered Design for the remainder of the term of protection.

It is worth nothing that no action is required from the right holders of UK trade marks and designs and no fee is payable when the continuing protection is automatically granted at the end of the transition period.

Domain names:

From the end of the transition period, businesses established in the UK, but not the EU, and UK-resident persons who are not EU citizens, will not be eligible to register new '.eu' domain names and any existing '.eu' domain names held by such businesses or persons will be withdrawn and will no longer function.

Copyright and Patents:

Copyright and Patents in the UK are fundamentally governed by The Copyright, Designs and Patents Act 1988. As such, there will be minimal changes after the end of the transition period.

IP Dispute Resolution:

After the end of the transition period, UK courts will not be able to hear cases on EUTMs or EU designs and they will not be able to issue EU-wide injunctions. Furthermore, UK judgments will not be enforceable in the EU, unless such enforceability is specifically, and successfully, negotiated on between the UK and the EU member states, or the UK joins the Lugano Convention in its' own right before the end of the transition period. Successful accession to the Convention would mean that there would be little change from the current system in respect of jurisdiction and enforcement, so English judgments would continue to be enforceable throughout the EU, Norway, Iceland and Switzerland. On 8 April 2020, the UK submitted its' application to accede the Convention, however the application will only be successful if it has the unanimous agreement of all the members. At the time of writing, only Norway, Iceland and Switzerland have expressed support.

Our Intellectual Property experts are able to advise you in respect of your IP rights both before and after the ending of the transition period.

For more information contact Daniel Fletcher in our Commercial department via email or phone on 0333 207 1145. Alternatively send any question through to Forbes Solicitors via our online Contact Form.

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