FICPI’s Briefing Note on the transitional arrangements for EU trade marks and designs in the UK.

The UK will leave the European Union (EU) on 31 January 2020.  However, the position for IP will remain unchanged until the end of a “Transition Period” which is expected to be 31 December 2020.  This briefing note sets out summary information regarding Brexit & IP, together with practical suggestions.

EU trade marks & registered designs

Existing & pending EU rights

No rights will be lost as a result of Brexit.  

Holders of EU Trade Marks (EUTMs) and Registered Community Designs (RCDs) which are granted and published before the end of the Transition Period will be granted equivalent UK registrations automatically.

Holders of International Registrations designating the EU under the Madrid (trade marks) or Hague (designs) systems will also be granted equivalent UK registrations.

The UK IPO has agreed not to charge any official fees for this, although applicants should note that their attorneys (in the UK or elsewhere) may charge fees for updating their clients’ records or taking on representation for these newly created UK rights.

Holders of EUTM or RCD applications which are still pending or RCD registrations which are unpublished at the end of the Transition Period will be given a period of nine months to file corresponding UK applications for the same marks and designs if they wish.  The new, equivalent UK registrations and corresponding applications will be accorded the same filing dates and priority dates as the original EUTMs and RCDs.

Note that new UK registrations arising from these procedures will be renewable separately from the rights remaining in the EU. It is recommended that trade mark and registered design owners should check with their usual annuity payment service providers about this.

Steps to take

For existing EUTMs, there will be no need to re-file the same marks in the UK.

Similarly, no action will be required in respect of granted RCDs.

However, care is needed where an EUTM has been registered for more than five years.  Evidence of use in the EU will still count in the UK to support the validity of the new equivalent UK registration and evidence of use in the UK will still count in the EU to support the validity of the remaining EUTM, but during the course of the five years after the end of the transitional period, that evidence will be given progressively less weight.

In view of this:

  • Holders of EUTMs should review their portfolios of marks, noting where they have been used within the EU, and file new applications to supplement their existing protection, where appropriate.
  • Efforts should be made to have all pending EUTM applications registered by the end of 2020 so that they will automatically give rise to equivalent UK registrations to save costs.
  • Owners of unpublished design registrations should arrange to have them published by the end of 2020, where it is appropriate to do so.
  • Arrangements should be made for payment of renewal fees for any new equivalent or corresponding UK rights.

New EU trade mark and design applications

New trade mark and registered design applications filed during the Transition Period will be treated in the same way as applications filed before the Transition Period begins.

If a new EUTM or RCD application is planned this year and protection is needed in the UK, then it will be advantageous to file the new application as soon as possible to allow adequate time for the application to be granted and published before the end of the Transition Period.

After the end of the Transition Period, new trade mark and registered design applications must be filed separately in the UK and the EU, if protection is desired in both territories.

Unregistered design rights

Any Unregistered Community Designs (UCD) existing at the end of the Transition Period will be automatically recognised in the UK as a ‘continuing unregistered designs’ for the remainder of the period of protection afforded by the UCD.  The UK government has announced that it will create a new Supplementary Unregistered Design (SUD) which will mirror the protection afforded by a UCD.

As members will know, the location of first disclosure of a design is important for UCDs.

After the end of the Transition Period, a first disclosure in the EU will not give rise to a UK SUD and first disclosure in the UK will not give rise to an UCD. 

European patents

Status of existing patents, and pending and future European patent applications

Since the European Patent Office (EPO) is not an EU institution, nothing will change for granted European patents or for pending or as yet unfiled European patent applications, whether filed directly at the EPO or as an International (PCT) Application designating Europe under the EPC.

The Unitary Patent and Unified Patent Court (UPC)

The Unitary Patent system is not yet operational and the Agreement establishing the Unified Patent Court (UPC) has not yet come into force. It is unclear at this stage whether the Unitary Patent system or the UPC will come into force and, if they do, whether one or both or neither will extend to the UK.  If the UPC does not come into force, or if no arrangements are made to permit the UK to remain a member of it, then the UK’s national court system will continue to have sole jurisdiction over UK patent disputes as it has now (whether under direct UK patents or European patents validated in the UK).  We will continue to keep members abreast of any new developments in this area.  However, since these are future possibilities and not yet in force anywhere, no action is needed for the time being.

Supplementary Protection Certificates

Supplementary Protection Certificates (SPCs) are national rights which exist separately in each EU member state.  It is expected that the UK SPC regime will continue with little or no change of substance, though the link to the Court of Justice of the European Union (CJEU), currently the highest appeal court for SPC matters, will be broken for the UK. It is possible that in the future UK law and/or jurisprudence relating to SPCs may diverge from EU law.

Enforcement

Subject to possible introduction in the future of the UPC (see above), enforcement of UK and European patents will remain unchanged.  Infringement and validity proceedings relating to European patents already fall under the exclusive jurisdiction of the national courts within the EU and will continue to do so.

During the Transition Period, EUTMs, RCDs and UCDs will continue to cover to the UK, and enforcement of these will remain unchanged.  After expiry of the Transition Period, EU and corresponding UK rights will need to be enforced separately The UK’s Supreme Court will replace the CJEU as the highest appeal court for trade mark and design matters

Exhaustion of IP rights

During the Transition Period, there will be no change to current rules on exhaustion of rights for IP-protected goods placed on sale by, or with the consent of, the rights holder in the EEA.

At least initially, it is expected that the UK will continue to recognise the EEA exhaustion regime after expiry of the Transition Period.  In the reverse situation, it is not yet clear whether or not rights relating to IP-protected goods placed on sale in the UK will be considered exhausted in the EEA after expiry of the Transition Period.  We will notify members if that looks likely to change.

Note on representation

European patents

Since the European Patent Office (EPO) is not an EU institution, the right of representation at the EPO enjoyed by UK-based European Patent Attorneys will not be affected and will remain unchanged after Brexit.

The European Patent Convention (EPC) already includes numerous non-EU states (such as Switzerland and Norway).  The UK will therefore not be unique in being a member of the EPC while not being a member of the EU.

This means that European Patent Attorneys based in the UK will be able to continue to represent applicants, opponents and other parties at the EPO without interruption.

European Union trade marks & Registered Community Designs

The European Union Intellectual Property Office (EUIPO) is an EU institution, and rights of representation before the EUIPO are restricted to attorneys who are qualified to act and operate in an EU member state.

This means that UK-based representatives will no longer be able to file new applications and oppositions at EUIPO after the end of the Transition Period.  However, they will be allowed to complete proceedings which are already pending, so no change will be needed for already-filed cases.

Many UK firms have made arrangements to allow them to continue serving their clients at the EUIPO. For example, some have established subsidiaries in an EU member state, while others have set up cooperation agreements with EU firms.  However, without plans of this kind, and in the absence of any specific agreement between the UK and the EU to the contrary, applicants and opponents will need to appoint non-UK representatives to file new cases at EUIPO after the end of Transition Period.  Applicants who use a UK firm to file EU Trade Marks and/or Registered Community Designs should check in good time before instructing the filing of any new applications after the end of the Transition Period, whether the UK firm is still able to do this work and, if so, how it will be handled.

UK patents, trade marks & registered designs

After Brexit, attorneys based in the European Economic Area (EEA) will be allowed to continue to represent applicants at the UK Intellectual Property Office (UKIPO), at least until the end of the Transition Period.

For UK trade marks and registered designs which are derived from equivalent EUTMs and RCDs existing before the end of the Transition Period (as described above) this right of representation is guaranteed for at least 3 years by the terms of the UK’s Withdrawal Agreement from the EU.

It is understood that IP attorneys based in the European Economic Area (EEA) will also be allowed to continue to handle UK national patent, trade mark and registered design applications filed at the UK Intellectual Property Office (UKIPO), at least until the end of the Transition Period.

This means that no action will be needed to appoint new representatives for UK national patent, trade mark and registered design applications which are currently being handled by non-UK attorneys based in another EEA state.  

There are no plans to change these arrangements at present, but it is conceivable that in the future the UK government may decide that owners of all UK registrations and applications will need to appoint a UK address for service.

Summary

  • Brexit will not alter the current system for prosecution, opposition and enforcement of European patents
  • Current practice for trade marks and designs will remain the same until expiry of the Transition Period on 31 December 2020
  • EUTM and RCD applicants and rights holders should review filing strategies as soon as possible before the end of the Transition Period
  • After expiry of the Transition Period, separate trade marks and design rights will be required in the UK and EU, if protection is needed in both territories
  • UK firms will be able to continue to represent all applicants and opponents before the EPO
  • UK firms will not be able to file new EUTMs or RCDs after the end of the Transition Period, unless they have made specific arrangements to enable themselves to do that (e.g. by having an office in another EU state)
  • IP firms based in other EEA countries will be able to represent holders of equivalent UK trade marks and registered designs that originate from EUTMs and RCDs for a period of at least 3 years after Brexit
  • At present there are no plans to stop IP firms based in other EEA countries filing new national applications for UK patents, trade marks and designs.

FICPI is grateful to Dr Tom Turner and Simon Bentley of Abel + Imray for preparing this Briefing Note

Dr Tom Turner joined Abel & Imray in 2012.  He has a Masters degree in Chemistry and gained his Ph.D from the University of Bristol in organometallic chemistry.  Tom is qualified as a European Patent Attorney and a Chartered Patent Attorney (UK) and handles patent work, mainly in the chemical field with a special focus on polymers, reactor technology, homogeneous and heterogeneous catalysis, and petrochemical processing, and registered designs across a range of technical areas.  Tom splits his time between Abel & Imray’s Cardiff and Bath offices.  He is also an examiner for the UK Patent Examination Board, the authority that sets the qualifying exams to become a UK Chartered Patent Attorney.

Simon Bentley joined Abel & Imray in 1997 and splits his time between the firm’s London and Ribadeo (Spain) offices.  He holds an MA in Modern Languages from the University of Oxford and is qualified as a European Trade Mark Attorney, a Chartered Trade Mark Attorney (UK) and as a Registered Trade Mark Agent (Ireland).  Prior to joining Abel & Imray, Simon worked as an English-language teacher in Spain and then as Director of Studies of a language school and as a translator/interpreter.  He is fluent in Spanish and French.  Simon is experienced in all aspects of trade mark work and advises frequently on contentious issues, including domain name disputes. Between 2007-2011, Simon served on the Council of CITMA and was Chair of both its Designs and PR & Communications Committees.