News and Views

On 1 January 2021, the United Kingdom ceased to be a member of the European Union. Following the end of the transition period on 31 December 2020, many changes to intellectual property rights occurred.

Trade Marks

• On 1 January 2021, EU trade marks ceased to give protection in the UK. Holders of EU trade marks had cloned UK trade marks automatically created at no extra cost.
• Your new UK (Cloned) mark is recorded at the UKIPO and exists as if it had always been registered under UK law with a filing date identical to your existing EU trade mark
• If you had a pending application for an EU trade mark on 1 January 2021 you have a period of 9 months from that date to apply for a comparable UK mark, which would receive the same filing date as the EU application, ensuring no gap in protection but for which UK fees will need to be paid.

Registered Designs

• As with trade marks, any holder of an EU registered design had a comparable UK design registration automatically created at no cost on 1 January 2021.
• The new UK (cloned) registered design will be recorded at the UKIPO and exist as if it had always been registered under UK law with the same filing date as the EU registered design.
• Again, as with trade marks, if you had a pending application for an EU registered design on 1 January 2021 you have a period of 9 months from that date to apply for a comparable UK registration, which would receive the same filing date as the EU application, ensuring no gap in protection but for which UK fees will need to be paid.

Unregistered Designs

• From 1 January 2021, EU Unregistered Designs will no longer cover the UK but businesses with these rights which arose prior to the end of the transition period will automatically become the holder of a Continuing Unregistered Design Right in the UK.
• Going forward UK businesses will no longer qualify for an EU Unregistered Design unless they first market the product in question in the EU, but if they do this those businesses will not qualify for UK unregistered design protection.

Copyright

• UK copyright is a national right which arises automatically and businesses do not need to do anything as a result of Brexit.
• Copyright will continue to be protected in the EU and the UK following the end of the transition period as the UK and EU are party to a number of international treaties on copyright which ensure reciprocal protection.

Patents

• Patents are national rights which are unaffected by Brexit.
• The European Patent Convention through which you can seek to obtain patents in different countries through one central filing is not related to the EU and the UK remains a member of this convention.

Exhaustion of Rights

• Intellectual Property rights that exist in goods placed on the UK market by, or with the consent of the rights holder after the transition period may no longer be considered exhausted in the EEA. This means that businesses may need the right holders consent if they want to export those goods in to the EEA.
• Intellectual Property rights that exist in goods placed on the EEA market by, or with the consent of the right holder after the transition period will continue to be considered exhausted in the UK. This means businesses will not need the rights holders consent to import those goods in to the UK.

Intellectual Property is complex and it can be difficult to know where you stand and the changes made by Brexit have only made it more complicated. Further free guidance is available from the government website at: https://www.gov.uk/government/news/intellectual-property-after-1-january-2021

If you require specialist advice specific to your circumstances Adam Turley, Managing Associate at McDaniels Law can be contacted at atu@mcdanielslaw.com.