Guest post by Amelia Skelding
How will Brexit affect UK IP rights?
The UK is currently due to leave the EU on October 31, 2019, subject to an extension. The UK’s departure from the EU will have an effect on various UK IP rights, as outlined below.
The exact ‘Exit Day’ date will depend on how the UK leaves the EU, namely, with or without a Withdrawal Agreement.
In a “No Deal” scenario, the UK will leave the EU without any transition period and Exit Day will be at the end of the Article 50 period, currently October 31, 2019.
Alternatively, if a Withdrawal Agreement is approved by both the EU and UK, the agreement will specify a ‘transition period’ whereby the UK will be required to continue following EU rules but not be involved in making decisions. In this situation, ‘Exit Day’ will be at the end of the transition period.
EU and UK Trademarks
Post-Brexit, European Union Trade Marks (EUTMs) will not provide protection in the UK. However, registered EUTMs will be automatically cloned on to the UK Register (at no cost to the right holders) and given the same rights as existing UK trade mark registrations.
EU designations of International Registrations will also be cloned on to the UK Register but they will be independent national UK registrations, not UK designations of the International Registration.
Pending EUTM applications will not be cloned and re-filing will be necessary if protection in the UK is required. There is a nine month period from the Exit Day where re-filed UK applications can claim back the original filing date of the corresponding EUTM application.
Use of an EU trademark in the UK only will be relevant for a period of time post-Brexit. Therefore, it is advisable to discuss use requirements with your IP representative to avoid EUTM registrations becoming vulnerable to non-use cancellation if challenged. Use of a trademark in the EU, but not including the UK, will be sufficient to maintain a newly cloned UK right for a period of five years after Exit Day. After this date, the mark must be put to use in the UK to maintain the registration.
European and UK Designs
After Exit Day, Registered Community Designs (RCDs) will not provide design protection in the UK. However, as with trademarks, RCDs will be automatically cloned on to the UK Register and given the same rights as existing UK design registrations.
Pending RCDs (including those subject to deferred publication) will not be cloned on to the UK Register but there will be an option to re-file these rights in the UK whilst keeping the same filing date.
European and UK Patents
Brexit will have no impact on European patents because the European Patent Convention (EPC) is not an EU treaty. Furthermore, members of the EPC do not need to be an EU state and there are already a number of non-EU members such as Switzerland and Norway. It is expected that the UK will remain a member of the EPC post-Brexit.
Conclusion: UK IP rights after Brexit
Once the UK has left the EU, separate trademarks and designs will need to be filed in order to ensure protection across both territories. Although it is not strictly necessary to file applications in both the EU and UK due to the cloning of rights, as this only applies to EUTM/RCD registrations and not pending rights, our general recommendation is that clients should consider filing both UK and EU applications for core trade marks and designs (to be certain of the UK coverage) but can rely upon the various conversion scenarios for less important marks.