How may Brexit affect my IP rights in the UK?

Wednesday 20th November 2019
Article written by: Duncan SchautLucy HudsonSusan Hur

Britain has missed several deadlines for exiting the European Union (Brexit). However, there is still a possibility Brexit will happen. The next tentative exit day is 31 January 2020. In this article we briefly highlight the issues Brexit poses for owners of EU trade mark rights, European registered community designs, European patents, and how IP disputes will be affected.



In summary, owners of already registered or granted European IP rights, or active proceedings, will generally automatically retain those rights in the UK if Brexit occurs. The exception is those who still have European Union Trade Mark (EUTM), EU registered community designs, or plant variety right applications pending on the exit day in a no deal scenario.

Our general comment is that if you have a pending European trade mark, design, or plant variety right, and you want that right to extend into the UK, then you should move as quickly as possible to get that right registered or granted before the exit day occurs.

If you are unsure or have further questions, then we suggest contacting one of the experts at Baldwins.

Patents

The good news is that Brexit, should it occur, will not affect your European patent office application, or granted patent.

This is because the European Patent Office is separate to the European Union. Thus, even if Britain leaves the EU, it is not “leaving” the European Patent Office.

Plant variety rights

If you have a granted Community Plant Variety Right (CPVR) before the exit date then this will become a separate UK Plant Breeders Right (UKPBR) without you needing to do anything.

However, if your CPVR is still an application within the two months before exit date, then you will need to actively apply for an UKPBR. If you do this within six months of the exit day then you can rely on the Distinctiveness, Uniformity, and Stability (DUS ) testing already completed, and novelty will be assessed as of the European filing date.

Registered designs

European registered community designs (RCD) that have already been registered will be in force through out the European Union until exit day. On or after exit day owners or holders of an RCD will receive a new UK registered design, and the RCD will cease its effect in the UK. The new UK registered design will be at no cost, and will be an equivalent to the RCD.

The new UK design registration will be treated as if it had been applied for and registered under UK law.

If you are an RCD owner and do not want coverage in the UK you can opt out of the automatic UK registrations.

Owners of RCD applications that are still applications on or after exit day can apply for an equivalent UK Registered Design within nine months of exit day. This new UK registered design will retain the RCD’s filing date. The usual UK filing fees will apply in this case.

Trade marks

EUTMs currently provide registered protection in all 28 member states of the EU, including the UK. After Brexit, EUTMs will only cover the remaining 27 member states. 

The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 have therefore been introduced in the event of a no-deal Brexit scenario.

 

EUTM registrations

Following Brexit, all registered EUTMs will have an equivalent UK trade mark registration created unless an owner of an EUTM wants to opt out of this after exit day. 

The UK registrations created following Brexit will be the same as if they were originally registered as a UK registration, including the filing/priority dates remaining the same. There will be no cost involved in the creation of these new automatic UK registrations.

The renewal dates for the new UK registrations will be the same as for the original EUTM registration. Late fees will not apply for renewal of EUTMs, which expire in the six months prior to exit day, and new UK registrations that expire within six months following exit day can be renewed without payment of an additional late fee.

WIPO has advised that international registrations filed at the EU IPO by UK nationals or legal entities without entitlement through another EU country would not be affected in the event of a no-deal Brexit.

 

EUTM applications

EUTM applications still pending on exit day will not automatically be given a corresponding UK application. Instead, the owner of the application will need to apply for a corresponding UK application within nine months of exit day. The new UK applications will retain the original EUTM filing date and must cover the same mark and the same or fewer goods/services as covered in the EU TM. 

WIPO has advised that international applications filed at the EU IPO before exit day, by UK nationals or legal entities without entitlement through another EU country, will not be affected in the event of a no-deal Brexit.

 

Trade mark use

If a trade mark is used in the EU prior to exit day, this will constitute use of the mark in terms of the UK registration. All UK registrations converted from an EUTM following Brexit will have a new five year grace period before they become vulnerable to cancellation for non-use in the UK.

Litigation

Court cases

If you are a holder of an EUTM involved in proceedings to oppose or cancel a UK trade mark, you may wonder what will happen to your case before and after exit day.

The good news is that these proceedings will continue towards resolution regardless of what happens. The bad news is that any injunctions and/or remedies issued after exit day will only apply to UK rights. This is because while the UK courts retain the jurisdiction to act as EU courts and can hear disputes relating to EU trade marks before exit day, the UK courts will lose the EU jurisdiction after exit day. 

While the UK government anticipates that there are only a small number of ongoing cases that will be ‘stuck in the middle’, rights holders will need to bear in mind that if their case is heard before exit day, but issued after exit day, pan-EU injunctions and remedies may still be issued but will not be applicable to the corresponding UK right. A convenient summary is provided below:

 

For completeness, any injunctions that were already in place as at exit day, and the terms of that injunction will still be treated as if they also apply to the corresponding UK trade mark. 

 

Representation

If you are a holder of any EUTMs, you may have chosen to be represented by attorneys based outside of the UK in anticipation for exit day. For completeness, you will not be required to appoint an European Economic Area (EEA) address for service after Brexit. However, It is prudent to do so, as you will need to file an EEA address for service before any EUIPO proceedings can continue.

 

Contractual disputes

If you have an agreement in place to export your goods and/or services to the United Kingdom, check which law will govern a dispute (typically under “dispute resolution” or “arbitration” part of the agreement). The governing law of an agreement will determine which law applies to the contractual relationship, and accordingly determine the scope of liability and damages arising under the agreement in the event of a breach.

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