EU Exit: Intellectual property after 1 January 2021

News article

The transition period ends on 31 December 2020. On 1 January 2021 there will be changes to UK intellectual property (IP) law to ensure the smooth departure from European Union (EU) IP systems.

The following is a summary of the key changes.

Use of representatives and address requirements to represent

From 1 January 2021, UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO). UK trade mark owners will need to appoint an European Economic Area (EEA) attorney to represent them on new applications and proceedings before the EUIPO.

However, the Withdrawal Agreement ensures that UK legal representatives can continue to represent their clients before the EUIPO in cases that are ongoing at the end of the transition period.

UK Address for Service

The Intellectual Property Office (IPO) has published the government response to the outcome of the Address for Service call for views published earlier this year. Views were invited on removing reference to the European Economic Area.

The outcome is that, broadly speaking, from 1 January 2021, subject to legislative implementation, only a UK address for service will be accepted for new applications and new requests to start contentious proceedings before the IPO.

The change will apply across all the registered IP rights (patents, trade marks and designs).

Changes to IP rights

Trade Marks
Comparable UK trade mark and design rights will be created at the end of the transition period under the terms of the Withdrawal Agreement.

On 1 January 2021, the IPO will create a comparable UK trade mark for every registered EU trade mark (EUTM). Each of these UK rights will:

  • be recorded on the UK trade mark register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original EUTM filing date
  • keep the original priority or UK seniority dates
  • be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM

You will not:

  • need to file an application for this right or pay an application fee. There will be as little administration involved as possible.
  • receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK and can take a screen shot from there as evidence of your right.

Businesses, organisations or individuals that have applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection. In this case, UK application fees will be payable, and the application will be subject to UK examination and publication requirements.

The IPO's digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding EUTM application.

For information on renewals, opt out process and numbering as well as more detail on subjects covered here, see:

See also below information on geographical indications for details on this IP right and the relationship with trade marks.

Designs
Re-registered UK designs will be created at the end of the transition period under the terms of the Withdrawal Agreement.

On 1 January 2021, the IPO will create a re-registered design for every Registered Community design (RCD). Each of these rights will:

  • be recorded on the UK designs register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original RCD filing date
  • keep the original priority date
  • be a fully independent UK design that can be challenged, assigned, licensed or renewed separately from the original RCD.

You will not:

  • need to file an application for this right or pay an application fee. There will be as little administration involved as possible.
  • receive a UK registration certificate. You will be able to access details about the design on GOV.UK and can take a screen shot from there as evidence of your right.

Businesses, organisations or individuals that have applications for RCDs which are either not registered or have deferred publication at the end of the transition period, will have a period of nine months to apply in the UK for the same protection. In this case, UK application fees will be payable, and the application will be subject to UK examination requirements.

The IPO's digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding RCD application.

For information on renewals, opt out process and numbering as well as more detail on subjects covered here, see guidance on EU trademark protection and comparable UK trademarks.

International Trade Marks and Designs
International trade marks and designs designating the EU will continue to have protection in the UK under the terms of the Withdrawal Agreement.

On 1 January 2021, the IPO will create:

  • a comparable UK trade mark for every international trade mark EU that is protected at the end of the transition period
  • a re-registered UK design for every international design EU that is protected at the end of the transition period

Where an international trade mark or design designating the EU has been applied for, but is not yet protected, the holder will have a period of nine months to apply for the same right as a UK trade mark or design. UK application fees will be payable, and the application will be subject to UK examination requirements and for trade marks publication requirements.

For information on renewals, opt out process and numbering as well as more detail on subjects covered here, see guidance on changes to international trade mark registrations after 1 January 2021.

Unregistered Designs
Unregistered community designs that arise before the end of the transition period will continue to be protected in the UK for the remainder of their three year term through continuing unregistered designs.

From 1 January 2021, a supplementary unregistered design (SUD) will become available in UK law.

The SUD will provide similar protection to that conferred by the unregistered Community design, but for the UK only.

The SUD will be established by first disclosure in the UK or another qualifying country. First disclosure in the EU will not establish a SUD right. It could destroy the novelty of the design should you later seek to establish UK unregistered rights.

Business will need to consider carefully where to disclose their products to ensure they have adequate protection in their most important market.

Read more about this in guidance on changes to unregistered designs after 1 January 2021.

Patents
You can apply for a European patent through the IPO or direct to the European Patent Office (EPO) to protect your patent in more than 30 countries in Europe, using the EU European Patent Convention (EPC).

As the EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK are also unaffected.

European patent attorneys based in the UK continue to be able to represent applicants before the EPO. See the notice on the EPO website for further information.

Supplementary Protection Certificates (SPCs)
SPCs are granted as national rather than EU-wide rights.

It was not necessary for the UK and the EU to agree the creation of a comparable right to ensure continued protection of existing SPCs in the UK at the end of the transition period.

The Withdrawal Agreement ensures that SPC applications which are pending at the end of the transition period will be examined under the current framework.

Any SPC which is granted based on those applications will provide the same protection as existing SPCs.

You will continue to apply for an SPC by submitting an application to the Intellectual Property Office.

Changes affecting SPCs due to the Northern Ireland Protocol
Due to regulatory changes for marketing authorisations there are some changes to the SPC application process which will come into effect from 1 January.

You will need to check whether your marketing authorisation is valid for the whole of the UK, or just Northern Ireland or Great Britain.

An application for an SPC must still be filed with the IPO within six months of your first authorisation.

Read guidance on changes to SPC and patent law after 1 January 2021 to ensure you are submitting the correct forms and accompanying documentation.

Parallel trade between the UK and the EEA
The IP rights in goods placed on the UK market by, or with the consent of the right holder after the transition period may no longer be considered exhausted in the EEA.

This means that businesses parallel exporting these IP-protected goods from the UK to the EEA might need the right holder's consent.

The IP rights in goods placed on the EEA market by, or with the consent of the right holder after the transition period will continue to be considered exhausted in the UK.

This means that parallel imports into the UK from the EEA will be unaffected.

Actions for parallel exporters of IP-protected goods to the EEA
Check whether you currently export legitimate, IP-protected goods to the EEA. These could be goods branded with a trade mark that have already been placed on the UK market.

The rights holder's permission to export those goods may not currently be required.

You may need to contact the rights holder to get permission to continue exporting these goods after 1 January 2021.

The IP rights holder may not provide permission for their IP-protected goods to be parallel exported to the EEA.

You may need to review your business arrangements, business model or supply chain based on the outcome of the discussion with the IP rights holder.

Actions for IP rights holders
Businesses that own IP rights (trade marks, patents, designs or copyright) may wish to seek legal advice if their IP-protected goods are parallel exported from the UK to the EEA.

You will need to consider if you want to allow parallel exports of your IP-protected goods from the UK to the EEA after 1 January 2021.

Copyright
Most UK copyright works (such as books, films and music) will still be protected in the EU and the UK. This is because of the UK's continued participation in the international treaties on copyright.

For the same reason, EU copyright works will continue to be protected in the UK. This applies to works made before and after 1 January 2021.

Current cross-border copyright arrangements unique to EU member states will 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.

Read more about changes to copyright law after 1 January 2021.

Geographical Indications
A geographical indication is an IP right used on products that have a specific geographical origin. They possess qualities or a reputation due to that origin, such as Scotch Whisky or Stilton cheese.

The Department for Environment, Food and Rural Affairs (Defra) leads on agricultural and food geographical indications (GIs) in the UK. They have published guidance, including the new UK GI schemes which will come into force on 1 January 2021.

The IPO has worked with Defra to ensure the new schemes are compatible with the wider IP framework. This will ensure the existing relationship between trade marks and GIs is maintained. Business guidance on this area will be published in due course.

Detailed guidance on IP and EU exit


First published 30 January 2020