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BREXIT - The Current Position relating to IP Rights

Update – February 2020

The UK officially left the EU on 31 January 2020. The UK is now in a “transition period” until 31 December 2020, during which EU rules still apply to the UK, while the details of the UK-EU future relationship are negotiated. The UK did not opt to extend the transition period beyond 31 December 2020, and therefore if no trade deal is agreed by this date, the UK will leave without a deal.

During the transition period, there are no changes to IP rights as regards the UK and EU. As European Patent and Trade Mark Attorneys, we are still be able to apply for EU unitary rights, and those rights still apply to the UK. What happens when the transition period ends on 31 December 2020 is discussed below.

If UK-based attorneys are no longer able to file applications at the EUIPO after 31 December 2020 (but see below regarding efforts to avoid this scenario), Brookes IP has contingency plans in place to ensure that we can still provide this service to all our clients at no additional cost.

EU Trade Marks and EU Designs

EU unitary registered trade marks (EUTM) and registered designs (RCD) currently cover the 28 EU countries (“EU28”). At the end of the transition period on 31 December 2020, existing EU28 rights will automatically be “cloned” into UK national rights, resulting in rights covering the UK and EU27. The UK Government has confirmed that cloning will occur automatically and will be free of charge. Legislation has been enacted to enable this. UK Registration Certificates will not be issued but details of the cloned UK Registrations will be available online on the UKIPO website.

The proprietor can decide at the next renewal whether to renew the UK cloned registration, the EU27 registration or both. However, a system for “opting out” of a “cloned” UK registration has been proposed in a “no deal” scenario (see below), although it is not clear if this will also apply if the UK and EU reach agreement. Also, the mechanism for opting out is not yet clear.

Any EUTMs or RCDs that have already been renewed, but whose renewal date falls after the end of the transition period, will have to have their cloned UK registration renewed after the end of the transition period. The UKIPO has confirmed that this can be done within the six month late renewal grace period without payment of the late fee.

EU28 applications which are still pending at the end of the transition period will not be cloned. However, applicants can refile in the UK if they wish, and provided this is done within nine months of the end of the transition period, the EU filing/priority date will be retained. The UKIPO filing procedures will be amended with immediate effect from the end of the transition period to enable applications to be filed based on EU28 pending applications.

Holders of cloned UK rights will not be required to nominate a UK address for service for a period of three years following the end of the transition period.

After the end of the transition period, it will be necessary to file separately in the UK as well as the EU.

The UK Chartered Institutes (CIPA and CITMA) are lobbying the UK Government to explore with the EU ways in which the UK can continue to participate in the EU trade marks and designs systems after the end of the transition period. Consultations are also ongoing regarding the rules on the address for service for UK national rights.

Community Plant Variety Rights

Similar provisions to the above will apply to Community plant variety rights, with the exception that the deadline for refiling a pending application in the UK after the end of the transition period will be six months rather than nine.

Patents

There is no impact of BREXIT on UK national or traditional European (EP) patents or patent applications. The European patent system is a non-EU organisation containing 38 member states, with 10 being non-EU states.

The Unitary Patent and the Unified Patent Court

Although the UK ratified the Unified Patent Court Agreement on 26 April 2018, the UK Government has now confirmed that the UK will not be party to the Unified Patent Court system in view of the UK’s withdrawal from the European Union. Germany has not ratified the agreement due to a constitutional challenge, which has been upheld by the Federal Constitutional Court. The Court decided that the implementing legislation was not adopted with the required consent of two thirds of the members of the Bundestag. The system is therefore not yet in operation, and may not be for some time.

Supplementary Protection Certificates

SPCs are national rights based on EU legislation. The UK Government has said it will enact any necessary new legislation to provide a legal basis for existing and new SPC rights under UK national law.

“No Deal” Scenario

If the UK and EU fail to reach agreement on the details of the future UK-EU trade relationship by the end of the transition period on 31 December 2020, the UK will leave at that point under a “no deal” scenario.

The UK Government issued further guidance notes in September 2019 to cover the multiple scenarios for Brexit and their impact on IP rights (links are provided at the bottom of this article). In the event of no deal, the proposed provisions for EU trade marks and EU registered designs are essentially the same as described above in relation to the “deal” scenario, other than of course the shorter timescale for putting the necessary systems in place at the UKIPO. EU registrations will be “cloned” and EU pending applications can be refiled within 9 months. It will be possible for proprietors of “cloned” UK registrations to opt out, although they can also decide not to renew.

The positions regarding the Unitary Patent, the Unified Patent Court and SPCs are the same as for the “deal” scenario.

Useful Links

EU Withdrawal Agreement and Political Declaration – 25 November 2018

UK White Paper – 12 July 2018

UKIPO Summary – regularly updated

“No Deal” Guidance – Trade Marks – 19 September 2019

“No Deal” Guidance – Designs – 19 September 2019

“No Deal” Guidance – Patents – 24 September 2018