After years of negotiations and controversy, on 1 January 2021, the Brexit transition period finally ended, and the UK left the European Union.
Below, we break down the new post-Brexit IP landscape (subject to legislative implementation).
Attorney representation and address for services
- UK legal representatives can continue to represent their clients before the EUIPO in ongoing cases only.
- Clients with new applications or proceedings at the EU Intellectual Property Office (EUIPO) will require EEA (European Economic Area) representation.
- European patent attorneys based in the UK continue to be able to represent applicants before the EPO.
- Across all IP rights, a UK address for services is required for new applications and requests to start contentious proceedings before the IPO.
Changes to IP Rights
Trade marks and Designs
- All registered EU trade marks (EUTM) and Community Designs (RCD) were converted to comparable UK rights. This includes international TMs and Designs designating the EU.
- Each of these UK rights will:
- Be recorded on the relevant UK register and have the same legal status as if you had applied directly in the UK, including the right to be assigned, licensed, challenged or renewed separately from the original EUTM/RCD.
- Keep the original EUTM/RCD filing date and the original priority or UK seniority dates.
- You do not:
- Need to do anything if your EUTM/RCD is registered. Your UK right has already been cloned.
- Receive a UK registration certificate, but details can be located online and saved (NB: there will be a delay in updating the system to display re-registered international designs).
- You DO need to:
- within nine months, apply in the UK for protection for EUTMs or designs which are not yet registered. Fees apply.
- Will continue to be protected in the UK for the remainder of their three-year term.
- A supplementary unregistered design (SUD) will become available in UK law.
- As the EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK are also unaffected.
Supplementary Protection Certificates (SPCs)
- SPCs are granted as national rather than EU-wide rights.
- Pending SPC applications will be examined under the current framework.
Changes affecting SPCs due to the Northern Ireland Protocol
- You will need to check whether your marketing authorisation is valid for the whole of the UK, or just Northern Ireland or Great Britain.
- An application for an SPC must still be filed with the IPO within six months of your first authorisation.
Parallel trade between the UK and the EEA
- Use of an IP right in the UK may no longer be considered exhausted in the EEA, meaning that exporting IPprotected goods from the UK to the EEA might need the right holder’s consent.
- Currently, the reverse does not apply, meaning that parallel imports into the UK from the EEA will be unaffected.
- Exporters: We recommend checking to see whether you currently export legitimate, IP-protected goods to the EEA.
- IP Holders: We recommend seeking legal advice if your IPprotected goods are parallel exported from the UK to the EEA.
- UK’s system of parallel trade is under review, meaning that the IP exhaustion regime for the UK may change in the future.
- International treaties on copyright mean that protection of most UK and EU copyright works (such as books, films and music) will be unaffected.
- Certain cross-border copyright arrangements that are unique to EU member states no longer apply to the UK.
- The existing relationship between trade marks and GIs is maintained.