How will Brexit impact the intellectual property rights of rights holders?
A European trade mark (EUTM) registration covers all EU Member States. However, from 1 January 2021, an EUTM will no longer extend to the UK.
On 1 January 2021, the UK Intellectual Property Office (UKIPO) will automatically convert (at no cost) all existing EUTMs into an equivalent UK national right. This will be a national UK registration with the same owner, filing date and priority as the EUTM registration. This new right is called a ‘comparable trade mark (EU)’.
Any EUTM application still pending on 1 January 2021, including those which have been accepted but have not yet been formally registered, will need to be re-filed in the UK if protection is required. If re-filed within 9 months, the filing date and priority of the corresponding EU trade mark application will be maintained.
EU designations of International Registrations will be treated in the same way and will lead to the automatic creation of a ‘comparable trade mark (IR)’. However, as this comparable UK registration will not be part of the International Registration, it will need to be maintained separately.
Protection of patents is largely unaffected by Brexit. However, recently, the EU has been working towards a Unitary Patent System with a Unified Patent Court (UPC). The UK has announced that it no longer intends to participate in the UPC system. This means that patents will continue to require a separate UK registration to ensure protection in the UK, rather than having the option of a unitary patent under any new patent regime.
A European design right (RCD) is a single registration that is protected in all EU Member States. On 1 January 2021, the UK Intellectual Property Office (UKIPO) will automatically convert (at no cost) all existing RCDs into an equivalent UK national right. This will be a national UK registration with the same owner, filing date and priority as the RCD registration. This new right is called a ‘re-registered design’. EU designations of International Design Registrations will be treated in the same way.
Any RCD application still pending, including those which have been accepted but have not yet been formally registered, will need to be re-filed in the UK if protection there is required. If re-filed within 9 months, the filing date and priority of the corresponding EU application will be maintained.
In addition, to avoid any inconsistency in the regimes which protect unregistered design rights in the UK and EU, the UKIPO will create two new types of unregistered design right, a 'Continuing Unregistered Design' (CUD) and a 'Supplementary Unregistered Design' (SUD), both of which come into effect on 1 January 2021 and mirror the EU Unregistered Community Design particularly in terms of duration.
As the UK is party to the Berne Convention which governs international copyright, copyright protection will remain unchanged in the immediate aftermath of Brexit. However, it is expected that a divergence between UK and EU copyright law will develop over time.
Injunctions which prohibit the infringement of an existing EUTM or RCD in the UK that are in place as of 1 January 2021 will be enforceable against the 'comparable' UK trade mark or design. However, in the case of a pending EUTM or RCD infringement action where judgment has not been obtained before 31 December 2020, if that action is in the UK, the UK Court will not be able to grant pan-EU relief and any injunction granted will be limited to the UK. If the legal action is in another EU territory, any pan-EU injunction will exclude the UK.
Furthermore, decisions of the Court of Justice of the European Union issued after 31 December 2020 will no longer be binding in the UK.
As of 1 January 2021, registrants of .eu domains that are not
- established in the EU or
- EU citizens or
- residents of an EU member state
will lose eligibility to register and own an .eu domain. Registrants who remain eligible, but use UK contact details, will be required to update these with contact details in the EU, failing which their domains will be at risk of automatic revocation.
Review Key Agreements
It is advisable to review licences, co-existence or settlement agreements relating to IP rights to understand the impact of Brexit and consider whether the parties should agree a side letter to deal with any comparable UK rights.
There is no time to lose – rights holders should review their IP portfolios and consider if they need to supplement their portfolios with UK national IP rights. Also, if relevant to their operations, businesses should start using their EUTMs widely (preferably in an EU Member State other than the UK) to ensure that the EUTMs cannot be challenged for non-use.