With the UK set to leave the EU in just mere months on the 1 January 2021, our heads of legal, trade marks and designs, James Tumbridge, David Birchall and Alex Brown have provided an update on what this will mean for you and your business.
Brexit – End of the road or not?
From 1 January 2021, the UK will be fully independent of the EU, because at midnight on 31 December 2020 the “transition” period expires. What does this mean for business? Well sadly for followers of the news you will know that at this moment no one truly knows because the UK and EU have yet to announce their “deal.” What we can tell you is that the UK intends for a seamless trading relationship, and the EU is also keen on a “deal” but sticking points remain. The UK and EU were due to announce the ‘deal’ if one is reached, by the end of October 2020 because the EU requires two months for the EU’s institutions to formally ratify the agreement. However, negotiation is ongoing into November. The UK is seeking the type of agreement which the EU has already concluded in recent years with other nations. The UK proposal draws on previous EU agreements such as the Canadian Comprehensive Economic Trade Agreement, the EU/Japan Economic Partnership Agreement and the EU/South Korea Free Trade Agreement, and the approach is consistent with the Political Declaration agreed in October 2019, between the UK and the EU, in which both sides set the aim of concluding a ‘zero tariffs, zero quotas’ Free Trade Agreement. The notes in our Spring Inside IP edition remain a valid overview and you can see them here.
Looking at the question of IP, as has been confirmed many times, there is no change for patents. The UK government has been active in considering and addressing issues regarding other rights and published “Brexit IP Regulation; Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020”. This Regulation incorporates the UK’s obligation in the Withdrawal Agreement to ensure that the outcomes of EUTM and Registered Community Design (RCD) cancellation actions that are pending at the end of the Brexit transition period bind the comparable UK right. The UK has also confirmed that comparable UK trade marks deriving from International registrations (IRs) designating the EU will be national UK rights, falling outside of the International (Madrid/WIPO) system. They will therefore have to be administered and renewed separately from the IRs from which they derive. The same is true for International designs designating the EU.
There is commitment to be no less favourable to foreigners than UK nationals, and the current rights in law today as to IP rights are to continue. This means much of the IP Chapter recites what you would expect to see in regards to copyright, trade marks and other rights. There is also considerable alignment on counterfeits but some are concerned about the enforcement and recognition of judgments. The real issues come with the consequences of exit to EU wide rights like trade marks and designs which we deal with in more detail below. So overall the IP landscape is becoming clear despite Brexit, and there is no expectation of significant changes when it comes to patents and litigation. The main points to consider concern the impact in the UK on your rights currently protected by EU trade marks and designs….
James Tumbridge, Partner.
Brexit – End of Transition Period Trade Mark Update
From 1 January 2021, European Union Trade Mark (‘EUTM’) registrations and EU designations of “Madrid” TM registrations will no longer have any effect in the UK. Accordingly, pending oppositions or cancellation actions against EUTM applications/registrations which are based solely on earlier UK rights will be dismissed after 31 December 2020.
In early 2021, the UKIPO will automatically create mirroring UK trade mark (UKTM) registrations in respect of both (a) EUTMs which had “registered” status on 31 December 2020 and (b) EU designations of “Madrid” TM registrations which had “accepted” status on 31 December 2020. In all cases the right created will be a UK national registration. These mirroring UKTMs will inherit any priority or UK seniority dates successfully claimed by the EU right from which they stem.
Since no registration certificates will be issued, it will be important to the check that these rights are correctly created by the UKIPO. The newly created mirroring UKTM registrations will have the same renewal dates as the EU rights from which they stem (the exception being the new UKTM registrations mirroring “subsequent” designations of the EU through “Madrid” TM registrations which will fall due for renewal every ten years after the filing date of the subsequent designation). The mirroring UKTM registrations will need to be renewed separately. Thus, where an EUTM falls due for renewal in January 2021, the newly created mirroring UK right will also need to be renewed in January 2021 if TM protection in the UK is required.
Owners of EUTM applications still pending at the end of 2020 will have a nine-month window in which to file UKTM applications for the same mark covering all or part of the same goods and services and claiming the benefit of the priority date.
Where possible, settle any challenges filed by you, based solely on UK rights, against EUTM applications/registrations as soon as possible since, if not decided/withdrawn beforehand, they will fall away after 31 December 2020. Where possible, settle any oppositions or objections against your own EUTM applications so that they proceed to registration before the end of 2020, thus qualifying for an automatic mirroring UKTM registration
Where your application to protect your mark in the EU is unlikely to proceed to registration before the end of 2020, consider filing a UKTM application now (in particular if priority can be claimed) rather than waiting until 1 January 2021 since the UKIPO’s examination process has slowed down considerably recently as a result of the increased volume of UKTM filings. Where there have been assignments or changes of owner name/address but these have not yet been recorded against the EU rights, apply to record these as soon as possible, thus avoiding the expense of recording them separately against both the EU right and the mirroring UKTM in the future.
Since licences that have been recorded against EUTMs will not automatically be recorded against the newly created mirroring UKTMs consider whether these need to be recorded afresh against the mirroring UKTM registration. Review recordals in place with customs authorities in both the UK and the EU since new recordals may be required, depending on which customs authority granted the recordal.
David Birchall, Partner.
Brexit – End of Transition Period Registered Design Update
Similar to the situation with EUTMs, from 1 January 2021, European Registered Community Designs (“RCD”s) and EU designations of international design registrations under the “Hague Agreement” (“IR(EU)”s) will no longer have effect in the UK.
The UKIPO will automatically create mirroring UK national registered designs in respect of RCDs which were both registered and published on 31 December 2020, and also IR(EU)s which hold a “protected” status on 31 December 2020. These mirroring UK rights will be created automatically and without cost to the right holder, and will inherit the priority and/or filing date(s) of the EU right from which they stem.
New UK registered designs arising from a RCD will be allocated the full RCD number prefixed with the digit ‘9’, and new UK registered designs arising from an IR(EU) will be allocated the full international registration number prefixed with the digit ‘8’. This will enable users to identify re-registered rights created from RCDs, those created from IR(EU)s, and existing UK registered designs. Since no registration certificates will be issued, it will be important to the check the UKIPO design register to confirm that these rights have been correctly created.
The newly-created mirroring UK registered designs will have the same renewal dates as the RCDs/IR(EU)s from which they stem, and will need to be renewed separately to the originating RCD/IR(EU.
It should be noted that RCD/IR(EU) applications still pending at the end of 2020 will have a nine-month window in which to file a corresponding UK registered design application for the same design and claiming the benefit of the priority date. In particular, any RCD/IR(EU) which is subject to deferred publication on 1st January 2021 will be treated as a pending application and so a corresponding UK registered design application will need to be filed for such designs within the nine-month window.
In view of the provision that only registered and published EU rights will have an equivalent UK design registration created automatically without cost, holders of pending RCD/IR(EU) applications are recommended to consider taking the following action in good time before 31 December 2020:
- complete all filing formalities (e.g. filing any outstanding priority documents)
- respond to any office actions raising formality objections
- request publication of deferred applications
Where there have been assignments or changes of owner name/address but these have not yet been recorded against the EU rights, apply to record these as soon as possible, thus avoiding the expense of recording them separately against both the EU right and the mirroring UK registered design in the future.
Consider whether licences recorded against the EU design rights need to be recorded afresh against the mirroring UK registered designs.
Alex Brown, Partner.
The UKIPO announced on 19 November that it will be necessary to have a UK address for service for all new patent, trade mark and design matters filed at the UKIPO from 1 January 2021, in a change from its previous position where an address in the EEA would have been permitted.
(This is subject to the necessary legislative changes but is expected to be implemented.)