IP Post Brexit

The United Kingdom has left the European Union (“Brexit”) and the “Transitional Period” is now over.   Nonetheless, Beck Greener maintains offices in both London and Alicante, and will continue to represent patents, trade marks and designs in both the UK and Europe.

This note sets out some of the key consequences of Brexit for IP rights.

UK address for service

Owners of applications or registrations for UK patents, trade marks and designs filed from 1 January 2021 (or those involved in contentious proceedings relating to UK patents, trade marks and designs commenced from that date, with certain exceptions), must have an address in the UK (or Gibraltar, or the Channel Islands) to which correspondence relating to their rights can be directed.

Beck Greener will continue to act as a UK address for service for all our clients’ UK patents, trade marks, and designs, and contentious proceedings relating to them.  If you would like us to advise as regards Beck Greener taking over representation of any further existing or future UK rights or proceedings, please do not hesitate to get in touch.

Beck Greener will continue to act as address for service for our clients’ European patents as normal, and for EU Trade Marks and Designs via our Spanish Office.

Patents

The status of UK and European patents and pending applications is not affected by the UK’s exit from the EU.  Beck Greener will continue to act in relation to UK and European patents as normal.

Trade Marks and Designs

Beck Greener will continue to represent both UK and EU Trade Marks and Designs before the UK and EU IPOs respectively.

Existing and future UK Trade Mark and Design applications and registrations will continue to be filed and prosecuted in the usual manner.

Existing and future EU Trade Mark and Design applications and registrations (and designations of the EU under the International Trade Mark and Designs systems at WIPO) no longer cover the UK – they only cover the remaining 27 Member States of the EU.  However, equivalent UK protection for rights acquired at the EU level by 31 December 2020 may arise automatically, or at a cost, as follows:

1. Applications and Registrations for EU Trade Marks and Designs filed by 31 December 2020

UK registrations corresponding to trade marks and designs granted protection at the EU IPO (including granted designations under the International Trade Mark and Designs systems) by 31 December 2020 have been automatically generated (“Cloned UK registrations”), except in the case of applications for EU designs which had their publication deferred beyond 31 December 2020.  We will be writing to our clients again shortly with full details of their Cloned UK registrations deriving from EU rights.

Applications for EU Trade Marks and Designs (including designations of the EU under the International System administered by WIPO) which were filed by 31 December 2020 though not granted protection by that date, or applications for Registered Community Designs which had their publication deferred beyond that date, will give rise to corresponding UK applications (“Cloned UK applications”) with the same filing/priority date as the EU application/designation only if a request is filed with the UK IPO before 30 September 2021 and the relevant application fee is paid to the UK IPO.  We have written to clients for whom we are handling pending applications/designations for EU Trade Marks and Designs with details as to the desirability, cost and procedure for obtaining a Cloned UK application.

2. Unregistered Design Rights 

Under EU law, subject to certain exceptions, an EU Unregistered Design right comes into existence automatically from the date the design is first disclosed (provided that this disclosure could reasonably have come to the attention of those specialised in the sector concerned operating in the EU), and expires three years later.  Such rights can only be enforced against third parties who can be shown to have copied the Claimant’s design.  Obtaining registration of these designs within a year of such disclosure provides greater protection and can be renewed up to a maximum of 25 years.

Holders of EU Unregistered Design rights in designs which are first disclosed in the manner described above in the UK or EU prior to 31 December 2020 will still be protected in the UK for three years after disclosure by virtue of the creation of a corresponding new UK Continuing Unregistered Design (“CUD”).  Owners of such rights can still apply to register their designs in the UK, the EU or beyond to secure stronger extended protection within one year after disclosure.

In addition, designs first disclosed in the UK from 1 January 2021 onwards will give rise to a new UK ‘Supplementary Unregistered Design’ (“SUD”) right automatically from the date of such disclosure, expiring three years later.

However, designs disclosed in one of the remaining EU countries from 1 January 2021 onwards will no longer automatically qualify for the SUD in the UK, and designs disclosed in the UK from 1 January 2021 onwards will not necessarily automatically qualify for EU Unregistered Design.  Nonetheless, disclosure in any one of these territories may destroy the novelty in the design, preventing unregistered rights coming into existence in any other such territory.

Therefore, where proprietors need short term protection against copying of their designs, they should consider carefully whether first to make their designs public in the UK or the EU to be confident of obtaining unregistered rights in the preferred territory, and ideally seek to register the design as soon as possible (and in any event within 12 months after the first disclosure).

Note that nothing in the above affects the scope of the wholly separate UK design rights which exist by virtue of the Copyright, Designs and Patents Act 1988, which will continue to accord protection to the shape and configuration of three dimensional articles in certain circumstances for up to 15 years from the end of the calendar year of their first disclosure.

If you have any questions on your unregistered design rights or you want to ensure that you will continue to have the protection you need post-Brexit, we will be happy to advise in this difficult and complicated area of law.