The UK will leave the European Union – Impact on IP

At 11pm Greenwich Mean Time, the United Kingdom will leave the European Union after more than 47 years as a member state (of the EU and predecessor organisations).

This is a sad day for many UK citizens who valued the membership of the EU and the many benefits it brings (but of course is also a happy day for some in the UK, which must be recognised).

The image here is a view of Gare Du Nord in Paris. This will be the UK’s primary rail connection with the European Union and is (according to @themanatseat61 – the guru of all things rail travel) the busiest railway station outside of Japan. It will of course not be the only rail link between the UK and the EU and not the shortest, either, which is the link between Newry station in Armagh, Northern Ireland and Dundalk station in the republic of Ireland.

Whilst we have known for some time that we will probably be leaving the EU, the outcome of the General Election (in which 45% of voters voted for explicitly pro-Brexit parties) is such that we have a government with a significant majority of seats, which is in favour of delivering upon the UK’s 2016 referendum to leave the EU and seems to interpret ‘leaving the EU’ as leaving the Customs Union and other related EU treaties and related organisations (such as the EEA, but that remains to be seen). There is definitely greater certainty. 

Of course, the rights we enjoy and obligations we have as members of the EU will not end today as the UK parliament passed the EU withdrawal bill leading the Prime Minister to sign the Withdrawal Agreement, which the EU parliament has now ratified. This means a transition period during which all EU laws will continue to apply in the UK as if the UK was still a member state until 31st December 2020. 

But what will be the impact on holders of UK and European IP rights.

Effect of Brexit on IP rights

For the purposes of discussing the impact on IP rights, representation and so on, it is important to note that the effective exit date is 1st January 2021.

We look at in turn the impact of Brexit on patents, designs and trade marks.

Patents

The UK is a member state of the European Patent Convention which governs the application for and grant of European patents and the operation of the European Patent Office (EPO) in Munich, Berlin and the Hague. The European Patent Convention and the EPO are not EU institutions.

The UK’s exit from the EU has no effect on European patents or patent applications. European patent applications will, as at present, continue to cover the UK as an automatically designated state and the UK will remain a territory in which a granted European Patent will automatically take effect (under the London Agreement).

Owners of European Patents do not need to take any action in relation to patent portfolios in the UK or other parts of Europe as a result of Brexit.

Representation before the European Patent Office

Ellis IP and, indeed, all UK-based European Patent Attorneys, will continue to represent their clients before the EPO. Representation rights continue uninterrupted and will not be affected at all by the UK leaving the EU. The EPO, on 29th January, released a notice to this effect, which can be found here: https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20200129.html

Designs

Other than UK registered and unregistered designs (which are unchanged by Brexit), there are two main types of registered designs that will be affected by the UK’s leaving the EU. They are Registered Community Designs (RCDs) and International Design Registrations designating the EU. (Unregistered Community Designs, UCDs, will also be affected). 

Community Designs are covered by an EU Treaty. As such, Brexit will directly impact upon Community Designs. In particular, from 1st January 2021, RCDs will no longer cover the territory of the United Kingdom. However, there is provision for equivalent rights to be established in the UK.

For Registered Community Designs that at the effective exit date (currently 1st January 2021) are:

·      Registered:

o  An identical UK right will automatically be created

o  With identical owner, address for service, etc

o  With retained filing date, priority date and renewal date the same as the original RCD

o  There will be no re-examination

o  The creation of this right will be without official fee

·      Pending:

o  The applicant has the right to file a corresponding UK national application within 9 months of the effective exit date

o This application will have identical owner, address for service, filing date and priority date

o  There will be no automatic cloning of pending applications

o  Normal UK application fees will apply

o  This includes any designs that have been registered but for which publication has been deferred

The advice, then, for Registered Community Design owners and their representatives is to docket for renewals of a new UK Registered Design Right with effect from 1st January 2021. And for applicants of Registered Community Designs, the advice is to docket a deadline to file a new UK design application within 9 months of 1st January 2021.

For International Registrations designating the EU, the situation is the same as for Registered Community Designs – a new UK Registered Design will be ‘cloned’ in the UK. Take care, however, to notice that this new UK Registered Design that is cloned from the EU designation of an International Registration will be an independent UK Registered Design (and not a new UK designation of the International Registration).

Unregistered community designs

Although less commonly considered, there is a 3 year term Unregistered Community Design (UCD) right. From the effective exit date (1st January 2021), UCDs will cease to be effective in the UK. However, the UK will automatically establish a new UK continuing unregistered design on effective exit day and this new design right will continue to be effective in the UK for the remainder of the three year term attached to it.

There will, in addition, be a new Supplementary Unregistered Design (SUD) available in the UK from 1st January 2021. SUDs will be effective for 3 years and will provide both three-dimensional and two-dimensional designs. It will be in addition to the UK’s existing (10-15 year term) unregistered design right (UDR).

SUDs will be established by first disclosure in the UK or another qualifying country. Note that first disclosure in the EU will not establish an SUD, but could destroy the novelty of an SUD in the UK.

Representation

The question of representation before the EUIPO will be dealt with at the end of the Trade Marks section below.

Trade Marks

EU Trade Marks are governed by an EU Treaty. The EUIPO is an EU institution.

EU Trade Marks will be affected by the UK’s leaving the EU.  In particular, from 1st January 2021, registered EU Trade Marks will no longer cover the territory of the United Kingdom. However, there is provision for equivalent rights to be established in the UK.

For EU Trade Marks that at the effective exit date (currently 1st January 2021) are:

·      Registered:

o  An identical UK national registered trade mark will automatically be created

o  With identical owner, address for service, etc

o  With retained filing date, priority date and renewal date the same as the original EU trade mark

o  There will be no re-examination

o  The creation of this right will be without official fee

o  Pre-Brexit use in the EU can be relied upon to prove use of this new UK Trade Mark

·      Pending:

o  The applicant has the right to file a corresponding UK national application within 9 months of the effective exit date

o This application will have identical owner, address for service, filing date and priority date

o  There will be no automatic cloning of pending applications

o  Normal UK application fees will apply

The advice, then, for EU Tarde Mark owners and their representatives is to docket for renewals of a new UK Registered Trade Mark with effect from 1st January 2021. And for applicants for EU Trade Marks, the advice is to docket a deadline to file a new UK design application within 9 months of 1st January 2021.

For International (Madrid) Registrations designating the EU, the situation is the same as for registered EU Trade Marks – a new UK Registered Trade Mark will be ‘cloned’ in the UK in accordance with the status of the EU designation. 

There is some impact of Brexit upon pending proceedings before the EUIPO. Firstly, any UK national rights that are cited as earlier rights in a EU Trade Mark Opposition or Cancellation proceeding will cease to be earlier rights and will fall away. Secondly, any Oppositions or Cancellations based solely on earlier UK rights will fall away.

Representation

Ellis IP will continue to manage representation rights before the UKIPO, the EPO and the EUIPO. Technically, from the effective exit date, EUIPO representatives from the UK will cease to have rights for representation before the EUIPO, except for ongoing proceedings which will not be affected. That said, there is no need to change representative if your representative is Ellis IP as measures are being put in place to ensure continuity and that representation rights for clients before the EUIPO are maintained.

Future relationship

The precise future relationship between the UK and the remainder of the EU is as yet unknown. Trading relationship (and other cooperative relationships) will be negotiated during 2020. For Ellis IP, we hope to maintain a close relationship with the EU. So, for us it is more au revoir than goodbye.

If you have any questions, generally or about your particular client European IP portfolios, please get in touch.