The transition period for the UK’s exit from the EU ends on 31 December 2020. From an intellectual property perspective, rights holders should be aware of the following consequences:
Registered EU trade marks and designs
On 01 January 2021, all registered EU trade marks (including International Trade Mark Registrations designating the EU) and designs will be automatically cloned to create equivalent national UK rights, with no fee payable. These new national rights will be fully independent of the EU right but will retain all the same filing dates and ownership. This means the UK rights will be due for renewal at the same time as the EU rights, with renewal fees due at both the UK and EU Intellectual Property Offices (IPO) moving forward.
Pending EU trade mark and design applications
It is important to note that EU applications still pending on 31 December 2020 will not be cloned. Should you require a national UK trade mark or design it will be necessary to re-file nationally at the UK IPO (at normal costs), though if this is done within a nine-month grace period starting on 01 January 2021, these rights will be back-dated to the EU filing date. Such applications will be examined separately under UK law by the UK IPO.
Trade mark rights in the Channel Islands
Owners of trade marks in both Jersey and Guernsey can be assured that Brexit will have no bearing on their rights. Jersey is automatically covered by an EU trade mark registration and will continue to be so, whilst it is also possible to formally extend a UK national trade mark to cover Jersey. Guernsey, meanwhile, has its own independent registration system that does not rely on prior rights in either the UK or EU.
Holders of European patents are assured that Brexit will not affect their rights, as the European Patent Convention is not an EU-regulated agreement. Furthermore, relevant EU legislation that governs Supplementary Patent Certificates (SPCs) will be retained in UK law. Patents registered in Jersey and Guernsey will also be unaffected.
Please forward any enquiries for the attention of Steve Le Feuvre: firstname.lastname@example.org
(Lysaght is a locally based firm of patent and trade mark attorneys, providing a service for the registration and protection of Intellectual Property rights globally).
Lysaght information release.