Business after Brexit: Interpreting the changes to Intellectual Property rights

The UK officially left the European Union (EU) at 11:00 pm on 31 January 2020. However, as part of the Withdrawal Agreement with the EU to help the UK transition away from EU membership, EU law continued to apply to the UK as if it were still a Member State until the end of 31 December 2020. On 24 December 2020, the EU and UK reached a Trade and Cooperation Agreement (TCA), which applies as of 1 January 2021. From this time, the UK and EU became two distinct regulatory, legal and customs territories.

Changes apply to the registered trade mark and design right regime, with trade mark and design protections needing to be obtained separately for the EU and the UK going forward. However, under the TCA the UK and EU agree, as a minimum, to maintain the specific principles of harmonised design rights, trade marks and copyright within their IP protection regimes. 

Set out below are the top implications concerning intellectual property rights which organisations should consider now that the UK is no longer part of the EU.

1. Trade marks – Changes to EU trade marks (EUTMs) from 1 January 2021 

   UK marks: The territorial scope of EUTMs no longer covers the UK. UK businesses with a registered EUTM were automatically granted a comparable and equivalent registered UK trade mark by the UKIPO on 1 January 2021. These marks hold the same filing date, priority date and UK seniority as the EUTM. Comparable UK trade marks have also been created for international trade mark registrations designating the EU, without any action required from proprietors. The UKIPO register has already been updated with the new UK trade mark records and the registration details are available for rightsholders to view. Parties not wishing to obtain the new UK comparable mark may opt out by submitting a "Request for Removal" to the UKIPO.
   
   EU marks: EUTMs already registered prior to 31 December 2020 continue to be valid in the remaining 27 Member States but, in order to benefit from ongoing protection, owners of EU trade marks should monitor and ensure the EUTMs continues to be used within the EU – use in the UK alone will not suffice.

2. Trade marks – EU trade mark applications still pending on 31 December 2020 

   Applications for EUTMs still pending at the end of the transition period have not automatically resulted in a comparable trade mark application with the UKIPO. However, applicants may still apply for a corresponding UK trade mark during the nine-month grace period commencing on 1 January this year and will end on 30 September 2021. Applying within the grace period enables the applicant to retain the earlier priority date of the EUTM application. Applications made after the end of the grace period will not retain the benefit of the earlier priority.

3. Trade marks – Applying for a trade mark

   Applications filed for an EU-wide trade mark only cover the remaining 27 Member States and no longer protect the UK upon registration. New applications should now be filed with the UKIPO for a UK-registered trade mark and the EUIPO for an EU-wide EUTM. Parties should consider the needs and territorial scope of their business, as well as future plans for potential market expansion. 

4. Designs – Registered and Unregistered EU Designs 

   UK-registered designs have been unaffected by Brexit. However, EU Registered Community Designs (RCDs) and EU Unregistered Community Designs (UCDs) no longer give protection in the UK. Similar to trade marks, holders of existing RCDs received a comparable "re-registered design" automatically with the UKIPO on 1 January 2021. "Re-registered International Designs" are also being provided in respect of international design registrations designating the EU that have already been registered and published by the EUIPO. The UKIPO has advised that applicants should expect a delay in re-registered designs based upon international designs appearing on the UKIPO register. 
   
   Continuing Unregistered Designs: Existing Unregistered Community Design proprietors still protected at the end of 2020 automatically now have continuing protection in the UK via a Continuing Unregistered Design right for the remainder of the three-year term of protection attached to the UCD. The UK has also created a new "Supplementary Unregistered Design" right, from 1 January 2021, which gives similar protection in the UK to that provided by the UCD in the EU.
   
   Applications for RCDs that remained pending at 31 December 2020 have not resulted in equivalent application for a comparable UK-registered design. As per trade marks, holders of pending RCD applications now have a nine-month priority window to 30 September 2021 in which to apply for a comparable UK "re-registered design". 

5. Trade marks and designs representation

   The UK government has now introduced "Address for Service" rules. This means that those issuing new trade mark and/or design applications or proceedings with the UKIPO must provide an address for service that is within the UK, Gibraltar or the Channel Islands. Addresses within the EEA will not be accepted. 

6. Domain names – What is the impact on my .eu domain registrations?

   Businesses legally established in a continuing EU Member State, or individuals with an EU residence or citizenship, have a continuing legal basis on which to hold a .eu domain. In the event this is not the case, .eu domains will no longer be registrable by UK-based applicants. UK-based businesses and individuals should have provided contact information to EURid prior to 31 December 2020 showing a continuing legal basis to hold a .en domain.

7. Copyright 

   Protection of Copyright in the EU: UK copyright law is based on national law and international treaties, which remain in place. The broad position regarding copyright protection therefore remains unchanged. However, the UK government has noted that it currently has no intention of transposing the recent EU Directives on (i) Copyright in the Digital Single Market; and (ii) Copyright relating to Online Transmission and Retransmission on TV and Radio content, into UK law. In addition to changes to database rights (see below), the satellite broadcasting 'country of origin principle' will no longer apply to the UK, so UK based broadcasters will not be able to rely on obtaining copyright clearance in the Member State from which the signal is produced, and broadcasters serving EU customers may need to clear rights in each receiving country.
   
   Protection of Database rights in the EU: UK businesses no longer receive protection in the EEA for newly created databases. Databases already protected at 31 December 2020 will continue to have protection for the usual term. The UK now operates its own version of database rights, but this protection will only apply within the UK. If your business also has establishments in the EU, it may look to rely upon them for continued EU database right protection.

8. Patents – Will my patents be affected after 1 January 2021

   Patents continue to be protected under the UK Patents Act 1977, and the UK remains part of the European Patent Organisation (EPO) despite exiting the EU, because the EPO is not an EU institution. European Patent Attorneys based in the UK can continue to represent their domestic and overseas clients before the EPO, and the UK remains designated in European patent applications.

9. Exhaustion of IP rights

   Once IP-protected goods have been put on the market in the EEA by the IP owner (or by consent of the owner), the owner can no longer prevent those goods from being resold anywhere in the EEA and the IP rights in those goods are effectively "exhausted". The UK is no longer in the EEA and so IP-protected goods placed on the market in the UK will not now exhaust the rights of IP owners in the EEA and their rights will still be enforceable against such goods if they are parallel imports into the EEA from the UK. Businesses may wish to consider obtaining a licence for exports from the UK into the EEA, or conduct cross-border trade from a continuing EEA member country (rather than the UK).
   
   As things currently stand, the UK continues to recognise EEA exhaustion and allows continued "parallel importation" from the EEA into the UK. The UK government has indicated that this position is likely to change in early 2021. 

10. IP licences and other agreements

    IP-related licences, co-existence agreements and similar agreements should reflect the agreed territories of use and account for the fact that an agreement to license use in the EU will no longer include the UK (and vice versa). For example, if a licence grants an EU-wide right to use an IP asset, that right will no longer cover use in the UK.
    
    If you require further information or if you need tailored advice, please do get in touch with your usual Ashurst contact, or any of the people listed below.