Now Brexit is looming, there is definitely no turning back. As I write, I am fully and acutely aware that our Prime Minister is in Brussels, trying to break the deadlock in negotiating a deal with our former family, the European Union. Fortunately, the Intellectual Property Rights are not caught by the deadlock and preparations have been under way for some time.
Intellectual Property (“IP”) is one of the most valuable assets a business can have. In many cases this value translates into millions of pounds in profit, but also in high amounts of money spent to develop, protect and defend this asset. One thing is certain: the more we look after these rights and protect them, the more rewards we collect. Navigating this area of law requires skill and knowledge, and Brexit will present some challenges , if not traps, for the unaware. Significant changes are afoot and will take effect, quite literally, over night, while we welcome the new year on 1 January 2021.
Let’s take a brief look at Trade Marks. Broadly speaking, currently an EU Trade Mark is protected in the UK, as is in all the EU countries, without having to separately register in UK. The same is true for the other categories of rights (for instance Registered Designs). Now we find ourselves in what is called a “transition period”, which is the result of a tremendous amount of work and negotiations behind the scenes.
Status quo has been maintained during the transition period, which will end, according to the latest news, on 31 December 2020. The date is called “IP completion day”. The new year will bring a new regime.
What happens after the IP completion day?
The intention is, of course, to have a smooth transition from IP completion day. How many times did we hear this noble intention? Every little time changes occur. The reality may well prove very different. We have to analyse the position from two perspectives : (1) UK rights in the new EU, and (2) EU rights in the new UK.
As for the first perspective, in a nutshell, Brexit has no direct impact on IP rights that subsist, or are registered, as UK rights, such as UK registered Trade Marks (the same goes for UK design right and copyright). Nor does it affect the application to UK rights of the international agreements that underpin the protection of IP rights. That sounds wonderful, doesn’t it?
However, the position in respect of the second perspective, that of unitary EU IP rights that are enforceable throughout the EU (from 1 January 2021 excluding the UK) is very different. Registered EU Trade Marks (and Community Registered Designs) will no longer cover the UK. The good news is that, as part of the “smooth transition” process , the UK will automatically create new comparable UK Trade Marks and registered designs, if all relevant criteria are met.
The time of registration or emergence of right is essential and can mean the difference between having protection in UK or not. I will explain this below.
Holders of registered EU Trade Marks (EUTMs), Community designs (RCDs) and Community plant variety rights registered or granted before the end of the transition period will automatically become holders of comparable IP rights in the UK.
Holders of unregistered Community design rights and sui generis database rights arising before the end of the transition period will be accorded an equivalent UK right with the same term of protection as the EU right.
This has significant practical consequences, if we consider, for instance, that to obtain registration of an EU Trade Mark takes 5 months if there is no opposition. For the registration to be finalised before 1 January 2021, the application should have been made by the end of July 2020. If it wasn’t made, then sadly that boat has sailed. However not all is completely lost, as I explain below.
Applicants for EUTMs, RCDs and Community plant variety rights that have not reached registration by the end of the transition period will have a grace period of nine months to apply for equivalent rights in the UK, taking advantage of the same filing, priority and (for trade marks) seniority dates. Therefore rights-holder must at this stage consider filing UK trade mark applications and claiming priority for those EU trade mark applications that were pending on Brexit day.
Very helpful registration procedures will be put in place, ensuring that the registration, grant and protection of comparable UK rights (these are, as set out before, those which are already registered in EU before the end of the transition period) will be carried out free of charge by the UK authorities, using the data available in the registries of EUIPO (European Union Intellectual Property Office), the Community Plant Variety Office and the European Commission (which those offices will provide). Right-holders will not have to carry out any administrative procedures or make any applications. Such right-holders will not have to have a UK correspondence address until the end of a three-year period from IP completion day.
Renewal fees will still have to be paid as normal, and it will continue to be possible to surrender rights in the usual way under UK law.
We are reassured by the UK IPO that there will be no disruption to services or changes to the UK IP system during this transition period. The IPO will convert almost 1.4 million EU trade marks and 700,000 EU designs to comparable UK rights at the end of the transition period. These will come into effect on 1 January 2021.
We should not expect, however, smooth sailing all the time (I dare say that all of the above, complicated as it is, by comparison to other changes that are coming our way, qualifies as smooth sailing) . There are areas in which the EU’s and UK’s IP laws could start to diverge, for instance the recently adopted Digital Copyright Directive – which the UK government has stated it has no plans to implement, and the coming changes to Copyright Law from 2021. Moreover, the EUIPO has confirmed that after Brexit it will disregard UK Trade Marks and other rights that have been relied on in oppositions filed before Brexit.
The new reality will be that, at the end of all these grace periods, we will face two separate systems with very different sets of rules. Those considering doing this work it without legal advice to save costs will be on a very dangerous and expensive path, and it could cost them the very rights they are eager to protect.
Whether you are a UK based business or individual, a European one, or from anywhere else in the world, happening to be in the beautiful North East, please remember that you don’t have to look far; there are IP specialists in the North East, and should litigation become necessary, the Intellectual Property Enterprise Court (IPEC) now operates in Newcastle as well, with specialist judges. It is no longer a London monopoly.
7 December 2020
Cristina Falzon, SINTONS LLP
Deputy District Judge, North-Eastern Circuit