The United Kingdom withdrew from the European Union on 31 January 2020. This article outlines the key implications of Brexit on intellectual property (IP) rights in the UK and EU. 

Transition period

The UK-EU Withdrawal Agreement provides for a transition period (1 February 2020 – 31 December 2020) during which EU IP rights will continue to apply in the UK.

Trade marks

After the transition period, Brexit will have the biggest impact on EU Trade Marks (EUTM) filed with the EU IP office (EUIPO). EUTMs have effect only in the EU. Businesses have relied on EUTMs for protection throughout the EU without filing separate applications with the national IP offices in each EU member state. The main consequences of Brexit on EUTMs are:

• Registered EUTMs will cease to have effect in the UK. Instead, the UK IP office (UKIPO) will automatically confer a comparable UK right on the holder of the EUTM. Moving forward, the UK right must be renewed with the UKIPO separately from the EUTM.
• Applications for EUTM which are still pending will no longer cover the UK. The UKIPO will not automatically issue a comparable UK right. Instead, the EUTM applicant must file a comparable application with the UKIPO between 1 January 2021 and 30 September 2021.
• Under UK law, a registered trade mark can be revoked if it has not been used in the UK for a period of five years or more. For a comparable UK right with a five-year period that includes time before 1 January 2021, use of the mark in any EU member state before 1 January 2021 will defeat an action for non-use revocation.

Designs

Similar to EUTMs, the UKIPO will issue comparable UK rights for registered Community designs (RCDs) and unregistered Community designs (UCDs). Applicants of pending RCD applications will have the opportunity to file a comparable UK application between 1 January 2021 and 30 September 2021.

Patents

Brexit does not affect patents granted by the European Patent Office (EPO), known and European patents. This is because the EPO is an international entity and not an EU institution. European patents will continue to confer protection in all EPO member states, including the UK. Patent applications can continue to be filed with the EPO for UK coverage.

Copyright

In general, reciprocal protection for copyright works between the UK and other territories, including the EU, is assured by international treaties on copyright. This will continue unchanged notwithstanding Brexit.

Key takeaways for businesses

Practical tips for businesses to maintain their IP rights in the UK after the transition period include:

• Renew all registered EUTM and RCD on time. The UKIPO will not confer comparable UK rights for expired marks or designs. If a registration is due to expire after 31 December 2020, make a note renew it with the UKIPO in addition to the EUIPO.
• For EUTM and RCD applications still pending on 31 December 2020, make a note to file comparable applications with the UKIPO by 30 September 2021.
• File new trade mark and design applications with the UKIPO as 31 December 2020 draws near.
• Review existing IP licence agreements and co-existence agreements that cover the EU. The territorial coverage of these agreements may need to be amended to ensure that the UK is covered after 31 December 2020. In future negotiations, contracting parties should treat the UK and EU as separate territories.
• Start using EUTMs in the UK to reduce the risk of revocation of the comparable UK right for non-use.
• Review ongoing legal proceedings affecting IP rights in the EU and seek legal advice on how these proceedings might affect IP rights in the UK.

This article is not an exhaustive review of Brexit’s impact on IP. Do contact us if you have specific concerns.