Impact of the UK BREXIT on European Intellectual Property Rights

The United Kingdom (UK) and the European Union (EU), materialized its separation (BREXIT) on February 1st, 2020.

The exit agreement signed by both parties established a transitional period extended until December 31st, 2020, during which the future relationship between the two territories were negotiated.

Thus, in the field of industrial property, the changes and consequences after January 1st, 2021 will mainly be as follows:

Patents (European Patents at the EPO)

European Patents are not affected by Brexit, as the European Patent Convention is not linked to the European Union, but is a multilateral convention to which the various territories that also make up the EU are individually party to the Convention.

The unitary effect of European Patents, which may not include the United Kingdom, may be affected, and it remains unclear whether the London Division of the Unified Patent Court will remain in London.

Trademarks (EUTMs at the EUIPO)

New EU trade mark applications filed during the transitional period will continue to include the United Kingdom and will be processed by the EUIPO.

Trade marks which, at the expiry of the transitional period, i.e. until 31 December 2020, have been registered, will retain their protection in both the European Union (without the UK) and the United Kingdom.

European Union trade marks which expire before the end of the transitional period and are renewed within this period will remain valid in the United Kingdom until the next renewal, without further action being required in the United Kingdom.

During the transitional period, the proprietor of a European Union trade mark shall be entitled to bring proceedings for infringement of that trade mark in the United Kingdom.
The United Kingdom Intellectual Property Office (UKIPO) has made arrangements to manage trade marks that have been registered by the EUIPO, or that are in the pipeline at the end of the transitional period. The provisions are summarised below:

• EU trade marks registered by the EUIPO before the end of the transitional period will be automatically added to the UK trade mark register. In this Register, European Union trade marks will incorporate the prefix “009” into the current number and international trade marks with effect in the European Union will incorporate the prefix “008”.
• It will not be necessary to appoint a UK agent to handle these registrations because the UKIPO will accept the existing EU registered address. Thus, the rights granted to the holder of a European Union trade mark will continue automatically after the end of the transitional period through the new Registry created in correspondence with that of the EUIPO.
• From that moment on, trade mark registrations created in the UK will be fully independent of the EU trade marks from which they derive.
• New trade mark registrations created in the UK will have the same expiry date but will have to be renewed separately at the EUIPO and the UKIPO. To this end we are creating in our systems a separate register for each new corresponding UKIPO mark with each EUIPO mark.
• EU trade mark registrations which expire after the end of the transitional period will have to be renewed separately and will incur renewal fees in the UK, even if the renewal is made before the end of the transitional period.
• EU trade mark applications in process at the end of the transitional period WILL NOT BE ENTERED automatically on the UKIPO Register, but an application for registration may be filed with the UKIPO for the EU trade mark application to be processed in the UK. This application may be filed within nine months after the end of the transitional period. Such UK applications for EU trade mark applications will be assigned the application date, and where applicable also the priority date, of the previous EU trade mark application. A prefix will be added to the relevant EU application or international registration numbers, in the same way as for marks already registered.

Designs (Community Designs at the EUIPO)

The effects of Brexit on Community designs are exactly the same as those on trade marks. The registration number of each design will be the same as that of the Community design, with the addition of the prefix “009”, or of the international design designating the European Union, with the addition of the prefix “008”.