Intellectual property rights and Brexit: what happens now?
Where are we now?
Now that the transition period has come to an end, significant changes have occurred in relation to numerous IP rights created by EU regulations, including EU trade marks which are no longer be considered to cover the UK.
What changed on 1 January 2021?
Registered EU trade marks
Holders of EU trade marks that were registered before the end of the transition period (i.e. before the end of 2020) have become holders of comparable trade mark rights in the UK without any need for re-examination. Essentially, EU trade marks were split into two – an EU mark and a UK mark – with the same renewal, filing and priority dates. The new UK rights have the same legal status as if the holder had applied for and registered it under UK law.
This change has happened automatically, with minimal administration requirements; rights holders will and do not need to pay for their new UK marks. Details are accessible via the Intellectual Property Office (IPO) website, albeit no new UK registration certificates will be issued.
Separate renewal fees will apply for each comparable UK trade mark and the existing EU mark, paid separately to the IPO and EUIPO.
Use and reputation
Under domestic law, a UK mark will be vulnerable to challenge if is not put to use for an uninterrupted period of five years. The IP Brexit regime ensures that any use of a mark in the EU before 1 January 2021 (whether inside or outside the UK) will count as use of the comparable UK right. This means that newly created UK marks are not liable to revocation on the ground that the corresponding EU mark was not put to genuine use in the UK before the end of the transition period.
Similarly, comparable marks will continue to benefit from reputation acquired in the EU (but not necessarily the UK) before the end of the transition period.
Opting out
There is an option for proprietors of existing EU marks to opt out of the automatic conversion (such requests can only be submitted after 1 January 2021), in which case the comparable UK right will be treated as if it had never been applied for or registered under UK law. This right may not be exercised in certain circumstances however, such as where the comparable UK right has been put to use in the UK, for example.
Pending EU trade marks
The IPO has only created comparable UK marks for EU marks registered before 1 January 2021. If an EU trade mark was pending on this date, rights holders have a further nine months (i.e. up to and including 30 September 2021) to apply to register the same trade mark as a UK right.
UK marks registered in this way will be able to take advantage of the same filing, priority and seniority dates as the corresponding EU trade mark applications, however, usual IPO application fees will be payable.
International marks and other IP rights
Similar rules to the above apply for international trade marks designating the EU, which continue to have protection in the UK under the terms of the withdrawal agreement – on 1 January 2021, the IPO created a comparable UK trade mark for every international trade mark (EU) that is protected at the end of the year.
The withdrawal agreement also makes provision for a regime that ensures the continued protection of Community designs.
Responding to change
1 January 2021 marked an important date for existing and pending EU trade mark holders who use their marks in the UK, as well as for prospective applicants. If you are looking for EU-wide trade mark protection and want that to cover the UK, you will now need to file separate applications in the two territories.
If you would like advice with regards to the impact of Brexit on your trade marks, or more generally with respect to a strategy for protecting your brand in the UK, EU and beyond, please get in touch with us.