How Brexit has affected Intellectual Property rights

March 2, 2020 admin

Brexit finally happened on 31st January, 2020 – but what does this mean for your Intellectual Property rights?

Brexit has paved the way for a potential myriad of changes in how domestic and EU intellectual property rights (IPR) will be protected and administered. While some aspects of Brexit’s effect on IPR have been clarified, uncertainty still surrounds other areas.

Frustratingly, this will likely continue to be the case as we progress towards the end of the “transition period” on 31st December 2020.

Until then, here are some key things to know about how changes to IPR post-Brexit will affect you and your intellectual property.

European Union Trade Marks

The UK will remain in the EU trade mark system until the end of the transition period. This means that until 31st December 2020, all IP rights will remain as they are, with EU rights applying to the UK, and UK rights applying to the EU.

After the transition period, your EUTM you will automatically be replaced with a corresponding UK registered trade mark by the Intellectual Property Office (IPO). Your UK trade mark will come into effect on 1st January 2021 (after the transition period ends). For example, a holder of an EUTM in January 2021 will also hold a comparable trade mark (EU) and the holder of a registered design will get a re-registered design.

Thankfully, as this will be an automatic process, there will be no action required on your part.

However, if you have a EUTM application pending after the transition period ends, you will need to apply to the IPO to obtain a cloned right in the UK. You will need to apply for this within nine months of the transition period ending (effectively by 30th September 2021), to ensure you get the same trade mark rights and protections in the UK.

Additionally, in a minor gesture of harmonisation, if an EU right is revoked, cancelled or invalidated, the UK equivalent will also suffer the same fate.

International registration systems

International registration systems for trade marks and designs, using the Hague system for Designs and the Madrid protocol for Trade Marks, will continue to apply to the UK throughout the transition period.

However, from 1st January 2021, trademark registrations designating the EU will no longer be valid in the UK.

While that much is certain, at this point in time neither the IPO nor the WIPO (World Intellectual Property Office) have any further guidance for the fate of rights holders’ protections in the UK after the transition period. If this will affect you, make sure to bookmark the IPO’s updates page for Changes to international trade mark registrations to stay on top of new information.

Supplementary Protection Certificates & Patents

If you own or licence a supplementary protection certificates (SPCs) or a patent, the Patents (Amendment) (EU Exit) Regulations 2019 (which comes into effect on 31st December 2019), means after the transition period ends, UK law will align with current EU law as far as possible. This has been designed to help maintain current systems and processes as easily as possible going forward.

While that may sound fairly straightforward and logical, the more complex nature of SPCs means current rights’ holders will have different transition or cloning provisions depending on which right the SPC applied to.

By way of background, SPCs extend the duration of IP protection of certain medical or biological products. These may be delayed from sale due to regulatory approval. They can also apply to patents, unregistered community designs, protection geographic indications of origin for products, and the cloning of EU-Wide collective or certification marks.

The IPO has published a substantial guide for SPC and patent law after the transition period; however, as with many aspects of Brexit, the picture is yet to in full clarity – not least of all for patents. We should expect further updates throughout the year as discussions between IPO and WIPO develop.

Are you concerned about Brexit’s impact on your IP rights? Speak to us today.

Importantly, Amgen Law has provided this Insights article for information only and nothing in it should be constituted as legal advice. However, if you would like to discuss any of these issues further about a legal matter that is affecting you, please get in touch with us directly using the form below.

    Note: this article is part of a series of comments from Amgen Law on Brexit’s impact on IPR. Jonty Gordon previously commented on Brexit’s impact on IPR on LinkedIn Pulse on 22nd August 2019, with a further update on February 3rd 2020. We expect further updates as more information becomes available.

    Featured image by tookapic from Pixabay.