The events of COVID-19 over the last two years have, to an extent, overshadowed the impact of Brexit following the Brexit transition period agreed between the United Kingdom and the European Union, which ended on 31 December 2020. However, there have been a number of important changes to UK law and practice since the UK left the EU, particularly in relation to trade marks and designs.

We have issued a number of notifications explaining the important changes and further, more detailed, information can be found on our website. Below is a summary of the main points to note:

Patents

  • As the European Patent Office (EPO) is an institution that is not related to the EU, the current system for obtaining European patents remains unaffected by Brexit. This means that our qualified European representatives can continue to act before the EPO irrespective of Brexit.

Trade marks

  • The UK automatically created equivalent cloned rights from EU and International (EU) trade marks registered at 31 December 2020. These comparable rights continue to have force in the UK but are treated as entirely separate rights from their parent EU registrations.
  • Any EU trade mark application that remained pending as at 31 December 2020 will no longer cover the UK. A grace period allowed for pending EU applications to be refiled in the UK as comparable applications came to an end on 30 September 2021. This means that trade marks will now need to be protected separately in the UK through a national filing or as a separate designation within an International trade mark application.
  • Challenges to UK trade mark applications or registrations can be based on a cloned UK right created from an EU or International (EU) trade mark. Up to 31 December 2025 use of such a right in the EU will maintain the UK cloned right and can be relied on for the purposes of any opposition or cancellation.

Designs

  • The UK automatically created equivalent cloned rights from registered Community designs and international design registrations having an EU designation registered as of 31 December 2020. These rights continue to have force in the UK but are treated as entirely separate rights from their parent Community design registration.
  • Any application for a registered Community design filed in the EU and which remained pending as at 31 December 2020 will no longer cover the UK. A grace period allowed for any pending EU applications to be refiled in the UK as comparable applications came to an end on 30 September 2021. This means that designs will now need to be protected separately in the UK through a national filing, in addition to filing a registered Community design application to seek protection in the EU member states.

Plant variety rights (PVRs)

  • Any plant variety application filed in the EU (at the Community Plant Variety Office) no longer covers the UK and the grace period allowed for pending plant variety applications to be refiled in the UK came to an end on 30 June 2021. This means that PVRs will need to be protected separately in the UK by applying via the International Union for the Protection of New Varieties of Plants.
  • EU PVRs registered before 1 January 2021 have been given a corresponding UK right and will have continued protection in the UK.

Renewal

  • Newly filed or automatically created comparable UK rights must be renewed separately to ensure continued UK protection. This applies to trade marks, designs, and PVRs.

Representation

  • From 1 January 2021 the UK has required a UK address for service for all live matters at the UK Intellectual Property Office (UKIPO). There is a grace period of three years for representation of EU trade marks and designs from which cloned rights were created post-Brexit and that will come to an end on 31 December 2023. However, a UK representative may need to be appointed before certain tasks can be actioned before the UKIPO. The grace period does not apply to cloned rights created from IR (EU) registrations.
  • The European Union Intellectual Property Office requires representatives to have EU qualification, residence, and nationality. Venner Shipley meets the relevant requirements for representation through our office based in Germany.

Exhaustion of rights

  • The UK recognises the concept of exhaustion of rights in respect of goods placed on the EEA market by, or with the consent of, the rights owner, so if goods are placed on the market in the EU they can then be imported into the UK freely as the intellectual property rights’ (IPR) owner’s rights are said to have been exhausted.
  • The reverse is not true, so that goods placed on the market only in the UK cannot be freely exported to the EEA and the consent of the IPR owner may be needed. The UK government has consulted on whether this position should continue and the outcome of that consultation is now awaited.

For more information on anything Brexit related, please get in touch with us at, brexit@vennershipley.co.uk.