Intellectual property rights post-Brexit

It’s simply business as usual for us after the UK officially withdraws from the European Union. Here's a quick update. Below are the answers to the most frequently asked questions (FAQs) about IP rights after Brexit, as well as a number of more detailed guides we’ve prepared. If you need specific help for your business, feel free to get in touch with us at hello@udl.co.uk.

The Brexit implementation period will run until 11pm on 31 December 2020 (Exit Day). Until then, EU law will continue to apply to the UK — and EU rules will continue to be interpreted and applied consistently in the UK and EU. There will be no changes to EU trade mark and design applications, registrations, proceedings or the ability to act before the EUIPO prior to 31 December 2020. UDL Intellectual Property will be able to represent and act for you as usual after Exit Day in all of your European IP matters, whether patents, trade marks or designs. Please contact your usual UDL adviser or email us at hello@udl.co.uk to discuss any specific IP implications for your business.

Brexit FAQs

Trade marks

What should I do if my EU trade mark is still pending on 1 January 2021?

Pending EU trade marks will not automatically be granted a comparable right in the UK. Any applications not published as of 1 October 2020 will still be pending on 1 January 2021. New corresponding UK applications must be filed within nine months of 1 January 2021. It may be advisable to file UK applications corresponding to pending EU trade marks now if they are unlikely to be registered by 31 December. Applications filed during this period will retain the filing and priority/seniority dates of the EU trade mark application. It is expected that the UKIPO will change the Address for Service rules so that applicants will require a representative in the UK.

What will happen to my EU trade mark registrations after 1 January 2021?

Existing EU trade mark registrations will be immediately and automatically replaced by comparable, independent UK rights, which will have to be renewed separately. These rights will retain the filing, registration, priority/seniority and renewal dates of the EU trade mark. While this process should be straightforward, there may be complexities around issues such as licences or security interests. There may also be some circumstances where your clients do not want their EU rights to be replicated in the UK. This will be the same even if no deal is agreed between the UK and the EU. It is expected that the UKIPO will change the Address for Service rules so that applicants will require a representative in the UK.

Will there be a cost for the creation of any equivalent UK rights after Brexit?

There will be no charge for the creation of the comparable rights. However, there will be future costs to contend with, as all replacement comparable UK rights will have to be renewed separately. It is expected that the UKIPO will change the Address for Service rules so that applicants will require a representative in the UK. This will be the case even if no deal is agreed between the UK and the EU.

Can I opt-out of the creation of any new rights after 1 January 2021?

The short answer is yes. However, in the following circumstances, opting-out will not be available:

- If on or after 1 January 2021 the comparable trade mark has been used in the UK by the proprietor or with their consent.

- If the comparable trade mark is subject to an assignment, licence, security interest or other recordal.

- If proceedings have begun, relying upon the comparable trade mark.

My EU trade mark is due for renewal shortly after 1 January 2021; what should I do?

We would recommend providing us with your renewal instructions as soon as possible so that everything is in place to apply for the renewal at the earliest opportunity, as we expect the EUIPO and UKIPO to be particularly busy immediately after 1 January 2021. However, renewing the EU registration ahead of time will not avoid the necessity to renew UK comparable rights as soon as they become due.

What will happen to my International Registration which designates the EU?

Protected EU designations of international trade marks will be immediately and automatically replaced by comparable UK rights, which will be recorded on the UK trade mark register. These new UK rights must be challenged, assigned, licensed and renewed separately from the original international registration. The comparable UK right will be a UK national right, not a designation of International Registration. All replacement comparable UK rights will have to be renewed separately. It is expected that the UKIPO will change the Address for Service rules so that applicants will require a representative in the UK.

What if my International Registration has multiple EU designations?

In the situation where more than one request has been made to designate the EU, each sub-division will be granted a comparable national trade mark right in the UK.

My International Registration is due for renewal shortly after 1 January 2021; what should I do?

We would recommend providing us with your renewal instructions as soon as possible so that everything is in place to apply for the renewal at the earliest opportunity. However, renewing the International ahead of time will not avoid the necessity to renew UK comparable rights as soon as they become due.

What should I do if my EU designation is still pending on 1 January 2021?

You will not automatically be granted a comparable national right in the UK if your EU designation is still pending on 1 January 2021. New corresponding UK applications must be filed within nine months of 1 January 2021. It may be advisable to file UK applications corresponding to pending EU designations now if they are unlikely to be registered by 31 December. Applications filed during this period will retain the filing and priority/seniority dates of the EU trade mark application.

Do I need to change my representative after Brexit?

No. We have an Irish subsidiary, UDL Intellectual Property Ltd, which will to continue to do your EUIPO work.

Registered designs

What should I do if my Registered Community Design (RCD) is still pending on 1 January 2021?

Pending RCDs will not automatically be granted a comparable right in the UK. New corresponding UK applications must be filed within nine months of 1 January 2021. Given that the EUIPO grants Registered Community Design applications very quickly, we would recommend filing any applications as soon as possible, so that they will be granted before 1 January 2021.

What will happen to my Registered Community Design (RCD) registration?

Existing RCDs will be immediately and automatically replaced by comparable, independent UK rights, which will have to be renewed separately. These rights will retain the filing, registration, priority and renewal dates of the RCD. While this process should be straightforward, there may be complexities around issues such as licences or security interests. There may also be some circumstances where your clients do not want their EU rights to be replicated in the UK. This will be the same even if no deal is agreed between the UK and the EU. It is expected that the UKIPO will change the Address for Service rules so that applicants will require a representative in the UK.

Will there be a cost for the creation of any equivalent UK rights after Brexit?

There will be no charge for the creation of the comparable rights. However, there will be future costs to contend with, as all replacement comparable UK rights will have to be renewed separately. It is expected that the UKIPO will change the Address for Service rules so that applicants will require a representative in the UK. This will be the case even if no deal is agreed between the UK and the EU.

My Registered Community Design (RCD) is due for renewal shortly after 1 January 2021; what should I do?

We would recommend providing us with your renewal instructions as soon as possible so that everything is in place to apply for the renewal at the earliest opportunity, as we expect the EUIPO and UKIPO to be particularly busy immediately after 1 January 2021. However, renewing the RCD ahead of time will not avoid the necessity to renew UK comparable rights as soon as they become due.

What will happen with EU designations of International Designs?

Protected EU designations of international (EU) designs will be immediately and automatically replaced by comparable UK rights, which will be recorded on the UK designs register. These new UK rights must be challenged, assigned, licensed and renewed separately from the original international registration. The comparable UK right will be a UK national right, not a designation of International Registration. All replacement comparable UK rights will have to be renewed separately. It is expected that the UKIPO will change the Address for Service rules so that applicants will require a representative in the UK.

Unregistered Community Designs

What will happen after 1 January 2021?

On 1 January 2021, unregistered Community designs will no longer be valid in the UK. These rights will be immediately and automatically replaced by UK rights.

Designs that are protected in the UK as an unregistered Community design before 1 January 2021 will be protected as a UK continuing unregistered design and will be automatically established on 1 January 2021.

From 1 January 2021, a new design right called a ‘supplementary unregistered design’ will come into effect for designs that are first disclosed in either the UK or a small number of qualifying territories. The terms of supplementary unregistered design protection will be similar to those already conferred by the unregistered Community design. However, the protection it provides will only extend to the UK.

Will the UK recognise unregistered design rights after 1 January 2021?

Yes. The UK government has prepared draft legislation which creates a new ‘supplementary unregistered design’ to protect designs made available to the public from 1 January 2021. The supplementary unregistered design will protect any design which does not produce a different overall impression on an informed user, taking the degree of freedom of the designer into consideration.

What’s the term of the supplementary unregistered design?

Three years from the date on which the design was first made available to the public in the UK, a qualifying country or a qualifying territory. It will be subject to interpretation by the UK Courts.

Patents

Will Brexit affect my patent protection in the UK or Europe?

The European Patent Convention is not a body of the EU and therefore Brexit will not affect European Patents. UK businesses can continue to apply to the European Patent Office for patent protection which will include the UK. Existing European patents covering the UK are also unaffected.

What about the unitary patent and the Unified Patent Court (UPC)?

The UK has officially withdrawn from the Unified Patent Court (UPC) Agreement.

It remains to be seen if the Unified Patent System will come into effect. Germany has not yet ratified the agreement. It seems unlikely the original agreement can proceed as London is expressly named as a location for one of the Central Division courts.

Do I have to change my representative after 1 January 2021?

No, our European Patent Attorneys can continue to represent you. Privilege is unaffected.

What will happen to Supplementary Protection Certificates (SPC) after 1 January 2021?

While UK SPCs are national rights, they are based on EU law. Nevertheless, after 1 January, any existing SPCs for medicinal and plant protect products in force in the UK will remain in force automatically. For future SPC applications, the requirements and processes for obtaining an SPC in the UK will remain the same. From 1 January 2021, the availability of a paediatric extension will be determined based on equivalent provisions in the UK’s Human Medicines Regulations 2012.

Existing marketing authorisations for medicines granted by the European Medicines Agency will be converted into equivalent UK authorisations on 1 January 2021. If you rely on an authorisation from the EMA as the basis for the SPC, you may be asked to provide information on the converted UK authorisation after 1 January 2021.

Data and market exclusivity

What will happen to data and market exclusivity authorisations after Brexit?

Data and market exclusivity based on a UK marketing authorisations will remain unchanged. The earlier EU or UK marketing authorisation will start the clock for any periods of exclusivity.

Community Plant Variety Rights

How will Brexit affect existing and pending Community Plant Variety Rights (CPVRs)?

After 1 January 2021, any existing CPVRs will not have effect in the UK. CPVRs granted before 31 December 2020 will automatically get a corresponding independent UK plant breeders’ right (PBR) issued by the Animal and Plant Health Agency (APHA).

Any CPVR applications that are still pending on 31 December 2020 will not be extended to cover the UK, and a separate application for a UK Plant Breeders Right will be required to obtain UK rights.

What will happen to provisions for compulsory licenses after 1 January 2021?

UK, EU and third country businesses will continue to be able to obtain a compulsory licence for manufacturing a patented medicine to meet a specific health need in a developing country.

From 1 January 2021, Community Plant Variety Rights will no longer have effect in the UK. You will not be able to use them to get a compulsory licence on a patent in the UK.

You will still be able get a compulsory licence based on UK plant breeders’ rights. This will include Community Plant Variety Rights that are converted to UK rights on 31 December 2020.

Exhaustion of Rights

What happens after 1 January 2021?

In the event of no deal, the UK government has said that the UK will continue to recognise the European Economic Area (EEA) exhaustion of rights regime (for now). This means that there should be no immediate change to the rules affecting imports of goods into the UK from the EEA. There may however be changes to the rules affecting exports from the UK to the EEA.

Agreements

I have an agreement, the subject of which is EU IP rights; will this continue to have effect in the UK from 1 January 2021?

Co-existence agreements and licences which deal with EU trade marks and Registered Community Designs will be deemed to cover the UK equivalent rights, unless there’s evidence that such agreements were not intended to have effect in the UK.

I have an agreement where the ‘territory’ is listed as the EU; will this continue to have effect in the UK from 1 January 2021?

It’s expected that such agreements will continue to have effect in the UK, unless there’s evidence that such agreements were not intended to have effect in the UK.

My EU IP rights are subject to an agreement where the governing law is UK law; do I need to take any action?

From 1 January 2021, the UK Courts will remain able to handle any contractual disputes between the parties to such an agreement. However, the UK Courts may not be able to deal with questions relating to the validity of EU IP rights.

If this is likely to be an issue, consideration should be given to renegotiating such agreements. However, this will require the consent of all parties and may lead to further costs.

Domain names

What domain names will be affected by Brexit?

From 1 January 2021, UK businesses will no longer be eligible to hold the following domain names:

.eu (Europe), .bg (Bulgaria), .fr (France), .hr (Croatia), .it (Italy), .se (Sweden), .sk (Slovakia).

For more information, please see our blog on eligibility criteria for domain names and potential contingency actions.

Our detailed guides to IP rights after Brexit

Industry news

01-12-2020

Brexit — upcoming changes to trade marks, designs and address for service rules

We explain the headline changes to IP rights set to come into play from 1 January 2021.

Read more

Designs

28-10-2020

Play your designs right — navigating unregistered design rights post-Brexit

Get to grips with the upcoming changes to unregistered design rights after Brexit.

Read more

Industry news

28-01-2020

Brexit update — business as usual

It’s simply business as usual for us after the UK officially withdraws from the European Union.

Read more

Industry news

13-12-2019

Post-election Brexit update

An update on how Brexit will affect your IP rights following the UK general election.

Read more

IP tips

27-09-2019

Brexit — Your domain name is at risk

You could lose your right to own any .eu domain names after Brexit — here are our recommendations.

Read more

Designs

08-02-2019

How will design protection work after Brexit?

Find out what's set to happen to your unregistered and registered design rights after Brexit.

Read more

Industry news

14-01-2019

Deal or no deal — how will trade marks work after Brexit?

We break down the government's new 'TM Exit Regulations', set to come into play on 'Brexit day'.

Read more

Industry news

08-01-2019

Deal or no deal — what happens to my intellectual property rights after Brexit?

Ahead of the 'meaningful vote', here's what will happen to all your IP rights once we leave the EU.

Read more

Industry news

26-09-2018

Brexit — what ‘no deal’ means for your intellectual property

We explain the key points from the new Brexit papers, which have big implications for IP.

Read more

Industry news

20-09-2018

We stand behind CIPA’s initiative to seek continued involvement with the EUIPO after Brexit

UK- and EU-based trade mark owners may soon need to protect their rights in two jurisdictions.

Read more

Trade marks

20-03-2018

Protection of IP rights post-Brexit

A new UK-EU agreement will see certain IP rights protected after the post-Brexit transition period.

Read more

Key people

Meet some of our Brexit experts.

Alan Fiddes

Partner - Leeds

Alison Simpson

Managing Partner - London | Milton Keynes

Gareth Price

Partner - Leeds

Dr Simon Mitchell

Partner - London

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