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Changes in Intellectual Property practices post-Brexit

Brexit? Is that still happening? Well yes, fortunately, or unfortunately (depending on which side of the fence you are on), and, consequently, there are changes to how certain aspects of the Intellectual Property (IP) system will operate in the UK on or after 1 January 2021. Here is your one-stop-shop for all things Brexit and IP post the end of the transition period:

Can I still file patent applications?

No change. In short, you can still file patent applications at the European Patent Office (EPO) and seek protection in the UK. The EPO is a separate authority to the EU and will therefore be unaffected by Brexit. Business as usual.

What are the changes to Trade Marks and Design Rights?

There are some notable changes here. If you already own an EU Trade Mark (EUTM) and/or a Registered Community Design right (RCD), or you are looking to get onto the design or trade mark ladder or are in that process right now, here are the changes that you can expect to be in force after 1 January.

What to do as a EUTM/RCD owner

If you currently own an EUTM/RCD, the UK designation will no longer be valid due to the separation of the UK and EU trade mark and design systems. No need to panic however, the UK’s Intellectual Property Office (UKIPO) will automatically award a comparable registered trade mark/design right in the UK with no additional charge or examination. Your priority dates will be preserved, and the legal status and remaining lifetime of your EUTM/RCD will be mirrored by your new UK registered trade mark/design right. It is important to note that you will not receive a certification from the UKIPO for this new right, instead you can locate them online at the UK registers for design and trade marks on GOV.UK. Similarly, if you own an international trade mark or design that designates the EU, a comparable UK right will be created with the same benefits.

Please ensure that if your EUTM/RCD is due for renewal before 31 December 2020, the EUTM/RCD renewal is paid at the EUIPO within 6 months of the renewal date to ensure that the renewal applies to the parallel UK right.

For EUTM/community design applications pending on 31 December 2020, there will be a 9-month window to file an equivalent UK application at the UKIPO to preserve filing and priority dates.

Getting onto the Trade Mark/Design ladder

If you have the intention of applying for a registered trade mark or design right, please note that the EUTM will not cover the UK post-Brexit. As a result, you will have to apply separately at the UKIPO to gain protection in the UK. The same applies for international applications, you will have to designate the UK separately from the EU to receive protection in the UK.

Unregistered design rights in the UK and EU

The UK is currently a part of the Unregistered Community Designs (UCD’s) system, where if you publish your design in the UK (or in the EU) then you will automatically receive UCD protection for your design in the UK and in the EU. However, this changes after the end of the transition period. From 1 January the UCD system will no longer support the UK, and as a result, the UKIPO will introduce a new unregistered design right called the Supplementary Unregistered Design right (SUD), which will mirror the characteristics of the UCD but is only applicable in the UK, not EU wide. It will require that your first disclosure be in the UK and not in any other geographic location.

Implications for Parallel Trade post-Brexit

In short, parallel trade is the cross-border sale of physical goods that have already entered the market. The term ‘parallel goods’ may apply to anything from toothpaste to medicine to soft drinks. Currently, when goods incorporating IP rights – whether that be patents, trade marks, copyright, or design rights are first sold in the EEA, the IP rights attached to those goods are exhausted and the IP holder will not be able to enforce their rights on the second sale of those goods. For example, if I am the author of a book I own the copyright for my creation, however, once I have sold a physical copy of my book within the EEA, I no longer have copyright over that physical copy and it can be distributed or resold within the EEA without my permission. The free movement of goods past the first sale is called parallel trading and the holder of those goods past the first sale can legally move your goods anywhere in the EEA without your permission.

After Brexit day, the UK will no longer be a part of the EEA. Therefore, the IP rights in goods that have already entered the market in the UK after the transition period may not be exhausted in the EEA. Which means that businesses that are parallel exporting IP-protected goods from the UK to the EEA post-Brexit may need the rights holders’ permission to do so.

It is worth noting that the IP rights in goods sold within the EEA before 1 January 2020 will continue to be exhausted in the UK and therefore can legally re-enter the UK after 1 January 2020 without the permission of the IP right holder. In short, parallel imports into the UK from the EEA will be unaffected.

If you are a business who regularly parallel exports goods from the UK into the EEA, then it may be necessary to review your business operations before the end of the transition period to ensure that you will not be unintentionally infringing any IP rights post-Brexit.

Aspects of IP that need your attention now

If you are a holder of a trade mark or design right, now may be a good time to review the nature of your IP to determine whether you may be affected by any of these changes. Similarly, if you have any pending EU or international trade mark or design applications now may be the time to think about whether you want to extend your protection to the UK given the divergence of the two IP systems.

Additionally, if you are a company that partakes in parallel trade, it may be worth reviewing your internal processes to ensure that you are not affected by any of these changes, and if you are affected, to put the necessary steps in place to negate any risk of infringing someone else’s IP.

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