Where does the end of the Brexit transition period leave IP rights owners in the UK?

It is welcome news that the UK has finally secured a reasonably comprehensive Trade and Cooperation Agreement (TCA) with the EU. Accordingly, as of now, EU laws and arrangements that prevailed during the post-Brexit transition period no longer apply.

UK businesses have long been used to securing EU intellectual property (IP) rights which have provided trade mark and design protection in all EU member states including the UK through a single registration. Such rights still of course continue, but UK protection through them no longer applies.

The rights in question are registered EU Trade Marks (EUTMs) and Registered Community Designs (RCDs) which now no longer offer protection in the UK for brands and designs respectively. Unregistered Community Designs (UCDs) will also no longer apply to less formal designs that originate in the UK.

Nevertheless, with some caveats, businesses will not lose rights on account of arrangements that have put in place that will confer equivalent rights to UK owners of EUTMs, RCDs and UCDs in accordance with the original UK/EU Withdrawal Agreement. Businesses should therefore review their portfolios of IP rights to take account of the acquisition of the new “cloned” UK rights and the position relating to EUTMs or RCDs that were still in course of application at the beginning of this year.

Newly-created UK rights will have new registration numbers but no fees will be payable with respect to them and there is no need to complete any applications. The comparable rights will be automatically granted to UK owners of EUTMs, RCDs and UCDs but it is nevertheless possible to opt-out from receiving them.

What will happen with EUTMs?

EUTMs that have been granted will give rise to a new comparable UK trade mark that confers the exact same rights and advantages (the same filing, priority and seniority dates and the equivalent protective effect for the relevant goods and services) in the UK as does the EUTM in the EU. The EUTM itself is thus still valid and the UK owner is still able to bring proceedings if it is infringed in any EU member state.
The comparable UK trade mark will be recorded on the register of trade marks at the UK Intellectual Property Office (IPO) and have the same legal status as if it had been previously applied for and registered successfully. It is a fully independent trade mark that may be challenged, transferred and renewed independently of the original EUTM it derives from.

What is the position with RCDs and UCDs?

Owners of RCDs at the end of 2020 are now entitled to a fully equivalent and independent UK registered design right that will confer protection in the UK. They would be additional to any UK registered designs that the proprietor may have already obtained under the provisions of the Registered Designs Act 1949.

The original RCDs themselves will of course remain valid and enforceable in all EU member states.

Businesses entitled to UCDs will automatically acquire equivalent UK unregistered design rights for the remainder of the three year term conferred by the UCD.

A supplementary unregistered design (SUD) will now also be enforceable in appropriate circumstances which will be the new comparable right to the UCD in the UK. A SUD is established by first disclosure in the UK or certain other counties not including the EU. Disclosure in the EU could destroy novelty and render the design invalid in the UK.

Independent unregistered design protection already exists according to Part III of the Copyright, Designs and Patents Act 1988 and it runs for a potential 15 year period.

International trade marks and designs

Trade marks and designs that have been applied for on an international basis as a bundle of rights in various jurisdictions including the EU will also have protection in the UK. They will likewise have effect in the UK as re-registered rights. Where the international application designating the EU has not yet achieved protected status, the proprietor will have the benefit of the 9 month period to apply for a UK equivalent right.

Applications for EUTMs and RCDs not yet granted

Action must be taken soon by any business which had applications for EUTMs and RCDs pending at the beginning of this year. Such businesses have a 9 month period in which they can apply for the equivalent UK right and pay the applicable fees to do so.

No doubt proprietors of relevant registered rights will consider how valuable they are likely to be in the UK before incurring the expense of applying for replacement UK rights. Renewal dates will be the same as those which applied to the rights in the first place so separate UK-only renewal fees may need to be paid relatively soon after the UK right has been obtained.

Other IP rights in outline

Patents are not significantly affected by the ending of the UK’s membership of the EU. The European Patent Convention (EPO) is not an EU institution. Owners of European Patents (EPs) will therefore not need to take any further steps as EPs will remain protected in the UK as it is in about 30 other EPO signatory countries which are not all in the EU. The UK has in any event suggested that it does not want to be party of the separate Unitary Patent system.

Software code proprietors will note that copyright is also unaffected by the Trade and Cooperation Agreement on account of cross-border copyright protection ensured through certain international treaties.

The UK is setting up its own geographical indication (GI) schemes that will benefit well-known food and drink products.

If you own EU IP rights, what should you now be doing?

In view of the automatic grant of comparable UK rights, there are several actions that a relevant UK business should be taking now:

  1. Identify all EUTM and RCD applications that are still in progress to ascertain if any might be allowed to expire if the enterprise’s only market is the UK. On the other hand, if it has no UK-presence or trade, it should consider if it is still worthwhile to pay the fees to apply for the replacement UK trade mark or design right in the next 9 months;
  2. Review EUTMs and RCDs that are due to be renewed and note the same renewal date for the “cloned” UK right;
  3. In connection with proving use of trade marks (essential to achieve enforceability), review records of EUTM use to distinguish between use made of the mark in the UK and use made in the EU;
  4. Consider any ongoing contentious proceedings relating to EUTMs and RCDs and how the split between EU and UK rights is affected. Businesses should consider any pan-EU injunctions granted in their favour or which are being sought as a remedy in any continuing proceedings;
  5. Review all current commercial contracts that relate to IP, especially licencing and co-existence agreements and how these may be affected generally by the TCA and by the newly-created UK rights;
  6. IP owners should notify any licensees or owners of charges on EUTMs or RCDs that the rights will be split between newly-created UK rights and the remnant of the rights that remain current in the EU. Any licences or security interests now registered at the EU Intellectual Property Office are not automatically registered with the IPO;
  7. If a business wishes to make a new trade mark or design application or take any other actions such as oppositions or cancellation proceedings in the IPO, it will need to provide an address for service that must be in the UK (including the Isle of Man), the Channel Islands or Gibraltar. Applicants for new EUTMs or RCDs will need to appoint representatives based in the European Economic Area to make such applications, so now might be a good time for an enterprise to review its IP advisors;
  8. Pending the issue of new UK trade mark and design registration certificates, enterprises should refer to the IPO website and make copies of the comparable rights registrations as evidence of title to their new comparable IP rights.

Further information is given by the UK government at https://www.gov.uk/government/news/intellectual-property-after-1-january-2021. Moore Barlow is able to advise further on IP portfolios and prospective applications for new trade marks and designs.