Brexit - Intellectual Property Update
Since voting in June 2016 the UK is finally set to leave the European Union today, 31 January 2020.
Various transitional provisions are in place over the next twelve months. Intellectual property provisions have mostly been discussed and agreed to.
The following outlines some key provisions for European Community intellectual property rights.
The first important aspect is that there is no disruption to IP services during the transition period – to 31 December 2020. However during this period the UK Office will convert around 1.4m EU trade marks and 700,000 EU designs to comparable UK rights ready for 1 January 2021.
Trade Marks
There are two aspects to trade marks, the first being those filed as a designation of an international registration, via the Madrid system, and the second being those sought as national EU applications/registration.
- International Registrations designating EU
During the transition period international registrations for trade marks through the Madrid system will continue to extend to the UK. Those that are registered during the transition period will also continue to the protected after the end of the transitional period. The UK Office are currently working with WIPO on how this will be shown.
- National Applications
During the transitional period European Community registered trade marks will remain in force in the UK. Comparable rights will be created during the transitional period and on 1 January 2021 new UK rights will be granted.
Any application that is registered during the transitional provision will also be provided a comparable UK right on 1 January 2021.
If, however your EU trade mark is still an application, you will need to apply, within 9 months (from 1 January 2021), for a comparable UK trade mark to be issued.
Designs
Designs are following a similar route as trade marks, both through the International Design System (Hauge) and nationally filed applications.
If you have a Registered Community Design, they will remain in force in the UK during the transitional provision and on 1 January 2021 a comparable UK right will be issued.
If you have an application at the end of the transition period, you have will have period of 9 months (from 1 Jan 2021) to apply to the UK for the same protection.
Unregistered Designs
Under the current system the UK falls part of the unregistered community design system. This allows two and three dimensional designs disclosed in the UK or an EU member state to still have protection for a three year term from copying.
Those disclosed before the end of the transitional provisions will still have the three year term applied. However if disclosed after the transitional, period protection will still be given for three years, but the rights will fall under the supplementary unregistered design provisions.
A summary for trade marks and designs are:
| Trade Marks | |
|---|---|
| Registered prior to 31 Jan 2020 | Comparable UK registration issued on 1 Jan 2021 |
| Registered during transitional period | Comparable UK registration issued on 1 Jan 2021 |
| Application filed and still pending prior to end of transitional period | Must apply to UK office for comparable rights within 9
months (from 1 Jan 2021) |
DESIGNS | |
|---|---|
| Registered prior to 31 Jan 2020 | Comparable UK registration issued on 1 Jan 2021 |
| Registered during transitional period | Comparable UK registration issued on 1 Jan 2021 |
| Application filed and still pending prior to end of transitional period | Must apply to UK office for comparable rights within 9
months (from 1 Jan 2021) |
This is only a small snippet of the intellectual property changes. There are other areas to consider, such as trade mark non-use provisions and office Hearings.
As we move through the transitional provisions, we will keep you advised of developments. If however you have a question or concern, please contact us to discuss further
Published: 31 Jan 2020